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.)

In the Prince case, Judge Deborah Batts of New York Federal Court held that Prince infringed the photographer’s copyrights.

Prince has his defenders.  “The part that really troubles me about these discussions,” commented one such defender on TechDirt, “is a rather simple point about fair use: if the new work does not, in any way, harm the original work, it seems positively insane to me to think that it shouldn’t be seen as fair use.”

And it is true that fair use does look to whether the later work harms the market for the copyrighted original work.  But market harm (or lack thereof) is only one part of the test: After all, fair use is an exception to copyright, a creator’s exclusive “right to copy” (literally), and prevent others from doing so.  A proposed copying must show more than simply that the originator’s market was unharmed.  It may be true, but by itself that doesn’t overcome society’s determination that a grant of exclusive right of copying was justified.

More indeed is what Marina Galperina, a commentator on the AnimalNewYork website, describes in distinguishing between material that has and has not been adequately (for fair use purposes) “transformed”.  As “good” fair use, Galperina cites an art exhibit that made liberal use of Disney copyrighted images. “When 0100101110101101.org lynched Mickey Mouse, they stole a recognizable commercial visual and re-invented it in their own sick context,” she says. “That’s cool.”

Galperina next offers another art exhibit featuring panda designs in which a designer sampled patterns from other designers.  She writes, “When [the panda culprit] ‘borrowed’ a design from a designer and essentially wallpapered it into his design piece without updating the context, adding meaning or doing anything but putting squiggly lines around it …. That’s weak.”

Galperina and Kennedy both make the point that attitudes about artistic fair use – or “the borrowing ethos” – seem to change as technology allows images to be gathered, manipulated and disseminated easily and without attribution.  So, for example, Galperina cites the iPad app Mixel, which bills itself as “the first social art app.”  The app, created by a former New York Times staff writer, allows users to make and share collages, using any web-based images.

Although Mixel’s Terms of Service do not overtly restrict use of previously copyrighted material, Mixel does encourage users to submit complaints if they think intellectual property has been improperly used. “If you believe that your work has been copied in a way that constitutes copyright infringement, or that your intellectual property rights have been otherwise violated,” the policy reads, “you should notify Mixel of your infringement claim.”

Digital capabilities notwithstanding, what is not new about “fair use” is how difficult it remains to articulate outside of actual examples.  The Prince case is high-profile because of the notoriety of the artist, media sensitivity to decisions of the New York federal courts and yet another example of the increasing ease of access via digital technology.  All art is available instantly – and effortlessly – to all other artists not only for study and inspiration, but for incorporating, manipulating and, yes, transforming.  At the National Gallery’s fine exhibit on Picasso’s early drawings, an information board describes how Picasso’s formative years coincided with the emergence of the great museum retrospectives in Europe.  Picasso made brilliant use of these experiences, referentially incorporating into his works the ideas of his contemporaries and great predecessors.

Digital technology does not change any of this, and probably at worst just rapidly accelerates – and escalates the tradition.  As Kennedy writes in the Times,

[T]oday’s flow of creative expression, riding a tide of billions of instantly accessible digital images and clips, is rapidly becoming so free and recycling so reflexive that it is hard to imagine it being slowed, much less stanched, whatever happens in court. It is a phenomenon that makes Mr. Prince’s artful thefts … look almost Victorian by comparison, and makes the copyright battle and its attendant fears feel as if they are playing out in another era as well, perhaps not Victorian but certainly pre-Internet.

But it is nowhere clear how these developments should be cause for change in fair use law, or more specifically why existing fair use analysis cannot govern the changed landscape.  If the test remains whether a use is “transformative”, then the problem may be with the meaning of “transformative”.  Defendant Prince was asked in his deposition “What is the message [of his art]?”  To which Prince replied, “The message is to make great art that makes people feel good.”

That kind of honesty itself may be worthy of some protection, although his lawyers may have preferred that he simply tell the judge what she may have wanted to hear.  What she may have wanted to hear was the standard for “transformative” use stated by the Supreme Court in 1994:

… whether the new work “merely supersede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994).

Which itself was merely illustrative of the main text of the fair use law, which states:

the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. (emphasis added)

As reported in the Times, Prince “also made it clear that he was not making art that commented on Mr. Cariou’s work itself. (Judge Batts ruled that for a work to be transformative it must “in some way comment on, relate to the historical context of, or critically refer back to the original works” it borrows from, a test she said Mr. Prince’s work failed.)”

Kate Tummarello, a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly, contributed to this post.

Ebbole claimed that Demented Needle owner Paul Averette had been telling customers and others that Ebbole’s shop used equipment infected with diseases such as Hepatitis C and HIV, claiming also that Averette had told the world that Ebbole had infected herself.

Ebbole also reported that Demented Needle boasted at least two defamatory objects in the parlor: a poster displaying an image of one of Ebbole’s tattoos, meant to discourage customers from visiting Ebbole’s shop, and a body cast decorated in demonic symbols and used to model Demented Needle’s apparel.  Ebbole claimed that Averette told customers the body cast was supposed to be Ebbole.

In his defense, Demented Needle owner Averette claimed that the poster was not defamatory because it was protected commercial speech and the body cast was not recognizable as Ebbole. The court held that Averette did not present adequate evidence to prove that the poster was protected speech. The court also held that, because Averette routinely told customers that the body cast was supposed to represent Ebbole, his speech was defamatory.

Ebbole also claimed that a co-defendant of Ebbole had defamed her through a MySpace posting, which included a video of Ebbole performing a body piercing.

The MySpace post read:

I came across this video during my recent health inspection of all [things]. I was certified to do microdermal anchoring in October of 2008…. [Ebbole's method] is disrespectful to what I do and what I love … allegedly. I ask you, people of the interweb … what should I do about it?

FYI: [Ebbole's method] is NOT the method I use or would suggest to be used for any implant procedure.

The post was followed by comments from third party MySpace users, some of which contained threatening and defamatory language.

In his commentary about the case, Eric Goldman questioned the court’s malice finding: “The court ruled the plaintiff was a public figure, so the plaintiff [would have] had to show defendants’ malice to support the defamation claim.  I am especially interested in its application to [the co-defendant’s] MySpace posting.” Goldman then questioned evidence of malice based on the MySpace posting.

Goldman discusses the specifics of the MySpace posting, wondering who had originally posted the video and noting that the statements that seemed to be most defamatory were made by third party commentators, not any defendant.  And in any event, Goldman thinks defendants’ MySpace comments were clearly opinion, not factual.  “I’m failing to see anything defamatory in this statement at all,” he concludes.

Goldman then discusses the case in light of 47 USC 230, the Communications Decency Act of 1996 (CDA). Section 230 of the CDA states that no user of an interactive web service can be held responsible for the postings or another user.  Goldman argues that this principle should have applied here. “Inferring malice from a site operator’s failure to remove third party comments should be preempted by [CDA Section 230] because it treats the operator as a publisher/speaker of those comments,” he writes.

The court’s opinion denying the preliminary injunction can be viewed here.  The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction.  (To be clear, inability to show “likely to succeed” does not mean “likely not to succeed”.  It is simply that the courts require a high threshold for a process involving a shortcut to a judgment where the plaintiff would be spared from actually arguing its full case before getting any remedy.)  According to the ruling, the Pennsylvania operation it remained an undecided issue of fact whether the Pennsylvania operation had made continued and exclusive use of the name “Field of Screams” in the Maryland market since before the Maryland operation was started in 2002.

This point was of course significant for a trademark case seeking an injunction, even a preliminary one, since the Pennsylvania claim of trademark exclusivity would be subject to challenge by a party claiming prior use.

As some additional background, it should be noted that neither litigant owns any federally registered trademark.  The Pennsylvania plaintiff is therefore claiming rights of trademark for an unregistered trademark under federal and state common law.  Many of the arguments of trademark validity by a plaintiff seeking trademark enforcement – in particular, brand distinctiveness – would generally be unnecessary, where the federal Lanham Act gives registered trademark owners a presumption of validity which a defendant challenger must overcome.

The ruling also raised doubts about the ability of the Pennsylvania operation to prove its national recognition, explaining that intermittent appearances on national media and in industry media were not enough to prove the potential for confusion among consumers. Additionally, the ruling expressed doubts regarding the ability of the Maryland “Field of Screams” to impact the business of the Pennsylvania “Field of Screams,” because there was evidence indicating that very few of the customers of the Pennsylvania operation came from the Maryland operation’s market.

On the other hand, the court denied the Maryland house’s motion to dismiss the case, and in doing so rejecting at least two basic trademark arguments by the Maryland defendants.  The first involved intent: although Maryland’s “Field of Screams” may not have intended to mislead anyone in using the same name as Pennsylvania’s haunted mansion, the Maryland proprietors could still be guilty of infringement. The court also rejected an argument that the difference in quality between the two operations undercut the plaintiff’s a trademark claim.

Finally, the court noted that the distinctiveness of the name “Field of Screams” and its associations, while perhaps subject to permitted use by the Maryland operation due to prior use, may still be strong enough to be recognized in the operation’s home market of Pennsylvania.

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.

WTForever21.com, a parody site published by Rachel Kane, had prominently disclaimed any affiliation or endorsement by Forever 21.  And as indicated, Kane’s purpose was (some would claim clearly) parody.   Kane was the proud recipient of a cease and desist letter from Forever 21 on April 22 (a copy of which can be found here), which alleged trademark and copyright infringement, unfair competition and trademark dilution.

Without testing the merits of her legal position and, according to several initial reports, not willing to expend the resources to do so, Kane announced that she would pull down her site by June 10th.  Kane then reversed course, and issued a statement last month stating “If the company continues to makes threats that have no basis in law, my attorneys are prepared to vigorously defend me and seek all available legal redress against Forever 21.”  The site is currently live.

Forever 21’s letter to Kane stated that the name “WTForever21” “refers to an abbreviation for colloquial expression that the general public may find offensive.”  That evidently would be the “WTF” appendage.

Forever 21’s copyright claim relates to Kane’s use on her blog of copyrighted images from Forever 21’s site.  The company’s trademark claims – claiming both infringement and dilution – seem to have anticipated the plausibility of a trademark fair use defense (for parody) succeeding against a claim of infringement, which may not succeed against a claim of dilution.

In trademark land, “dilution” refers to the tarnishing or diminution of an established trademark regardless of whether the defendant’s use of the trademark constituted actual infringement.  To illustrate the point, Paul Supnik cites the classic Kodak case from 1898, which established the dilution doctrine.   (Eastman Photographic Materials Co. v. Kodak Cycle Co., 15 Rep. Pat. Cas. 105 (1898)).   In that case, the film manufacturer Eastman Kodak successfully challenged a bicycle manufacturer’s use of the name “KODAK”, even where (as Supnik notes) “No significant segment of the consuming public was likely to think that bicycles were made by, endorsed or sponsored by a film manufacturer.”  Nonetheless, Eastman Kodak successfully argued that the very use of the trademark – in this case a distinctive and established brand intimately associated with the Eastman Kodak company – served to dilute the distinctiveness and thus the value of the trademark, even where used in a noncompetitive market.

As Supnik explains:

Justification for the dilution doctrine is that somehow the public benefits from protection against diluting the distinctiveness of a famous mark and that it simply is not right to reduce the importance or value of a very valuable mark for the free ride of the newcomer, even if the public is not confused.

A parody fair use defense would (if successful) undercut a trademark infringement argument, the argument being that a use that is clearly parody would not cause a “likelihood of confusion” among the consumers as to the source of the trademark.  (See here for a good discussion of this point.)

But trademark dilution is a different story.

Baila Celedonia cites a 1994 case involving a competitor’s parody use of John Deere’s famous deer silhouette logo, where the competitor’s commercial was “animated and hopped around the television screen, pursued by [the competitor’s] lawn tractor and a barking dog.”  Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994)

The defendant’s use of Deere’s logo was clearly parody, preventing Deere from demonstrating any “likelihood of confusion” in the marketplace.  Deere lost its infringement claim, but won a dilution claim.  As Celedonia notes, even if intentionally parody and even if not technically “infringing”, a trademark use may constitute dilution.  Quoting from the court’s discussion of parody in the context of dilution:

Whether the use of the mark is to identify a competing product in an informative comparative ad, to make a comment, or to spoof the mark to enliven the advertisement for a noncompeting or a competing product, the scope of protection under a dilution statute must take into account the degree to which the mark is altered and the nature of the alteration.  Not every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noncompeting products. But some alterations have the potential to so lessen the selling power of a distinctive mark that they are appropriately proscribed by a dilution statute. Dilution of this sort is more likely to be found when the alterations are made by a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.  (emphasis added)

WTForever21.com is clearly not “a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.”  It is (at worst) a true parody site.  In the Deere case, the parody use by a direct competitor undercut the fair use defense.

Along the way, we will touch on Run DMC, Thierry Guetta (aka “Mr. Brainwash”), “pop-art”, photography, Andy Warhol and Robert Rauschenberg.

Joining me to discuss copyright, fair use, street art, what is street art and all that we can cover in 15 minutes … I’m joined by Brooke Jimenez.  Brooke is a second-year law student at Georgetown University Law Center with a focus on international law, and a creative mind on issues of media law.

Stories mentioned in the podcast include this from The Art Newspaper, and this from George Will in the Washington Post.  Please click the audio player link below for the podcast. Enjoy.

At first glance, the case is a breathtaking blow for newspapers and media organizations (including, presumably, bloggers), because it upheld a fair use defense against copyright infringement where the newspaper story was copied in its entirety.

This case would seem to run afoul of every fair use guideline ever published, including the fair use law itself, and particularly the frequent characterization of a “fair” use as a “transformative” use:

… whether the new work “merely supersede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994).

But that’s first glance.  Judge Mahan hasn’t yet issued his Order, so we know only wha the Las Vegas Sun reported from the hearing.  According to the Sun, we know for example that the defendant, Center for Intercultural Organizing (CIO), used the Las Vegas Review-Journal article for educational purposes – a noncommercial use often favored under fair use analysis.  Judge Mahan also ruled that the use of the article did not harm the market for the article (another fair use factor) – although without the written Order it’s difficult to understand how a freely available full copy would not harm the commercial market.  The Sun did quote Judge Mahan as saying that “The market (served by the CIO) is not the [Las Vegas Review Journal’s] market,” a comment which raises more questions than it answers.

And perhaps most importantly, Judge Mahan found that the Las Vegas Review Journal article was primarily factual rather than creative.  The article – shown here in a copy of the court filing – reports on the incidence of Las Vegas Police misdemeanor arrests leading to immigration charges also being filed, including deportations.

This is almost certainly the most controversial part of the ruling, since it characterizes reporting on police arrest statistics – public records – as just that: public records.  This goes to the very subject matter of copyright, namely protection for “original works of authorship fixed in any tangible medium of expression” (17 USC §102).  Facts and news, words and short phrases and titles tend not to get copyright protection.  The unique expression of otherwise non-copyrightable subject matter may get protection, although it is the expression rather than the facts themselves that gains the protection.

On the defense side is fair use, which as a threshold matter must overcome the rights of the copyright owner to protection.  Obviously when those rights are weaker, the fair use case is easier make.  In this case, Judge Mahan seems to be saying that police reporting, if protectable by copyright, deserves only weak protection.  Putting the merits of that view aside, that of course, goes to the second fair use factor under 17 USC §107, “the nature of the copyrighted work”.  In brief, less creative works garner less copyright protection, and are more vulnerable to a fair use claim.

The Las Vegas Sun coverage of the case, from March 18, 2011, can be found at this link.

Not in dispute is that the employee’s actions violated the company’s social media and other personnel policies, which (among other things) prohibited depicting the company ‘in any way’ on Facebook or other social media sites or from “disparaging” or “discriminatory” “comments when discussing the company or the employee’s superiors” and “co-workers.”

In dispute is whether that social media policy – and the company’s actions in enforcing the policy – violated public policy, in particular Federal labor law.  This came into fast relief when the National Labor Relations Board (NLRB) subsequently filed a complaint against the company, charging the company with violations of the employee’s rights under the National Labor Relations Act (NLRA).

The company is American Medical Response (AMR), an ambulance service provider.  The incident followed a customer complaint about the employee’s work, when the employee’s supervisor asked the employee to prepare a report about the incident.  At that point, the employee sought but was denied representation from her union.

Later that day, the employee posted negative remarks about her supervisor and AMR on her personal Facebook page, through her home computer.  It appears that at no time did she use AMR’s technology or services to conduct her actions.

According to the New York Times story about the case, the employee’s grievance – and subsequent social media commentary – related primarily the fact that her supervisor barred a representative of the Teamsters to assist her in preparing her report.

The employee’s Facebook comments sparked an exchange of further commentary by other AMR employees, and further disparaging comments by the employee about the supervisor.  That prompted her suspension and later termination.

Two important things to note about this case:

1. “Concerted Activity” under NLRA.

As the NLRB stated in its press release about the case, “the employee’s Facebook postings constituted protected concerted activity” under the NLRA.  “Protected concerted activities” under the NLRA include the right of employees to “Discuss wages, working conditions or union organizing with co-workers or a union” and “Act with co-workers to improve working conditions by raising complaints with an employer or a government agency”.

Employers may not, among other things, “Fire, demote, transfer, reduce hours or take other adverse action against employees who join or support a union or act with co-workers for mutual aid and protection, or who refuse to engage in such activity.” (emphasis added)

According to the New York Times, this case is the first where the NLRB interpreted its powers to include regulation of employer conduct related to employee activities in social networking.

What is not clear is whether the NLRB would have filed this case – and whether this would have constituted “protected concerted activity” – had the employee’s conduct been limited to solo Facebook complaints, rather than engaging with co-workers and an online community.

2. Social Media Policies Violative of NLRA.

As described in the New York Times, AMR’s policies “barred employees from depicting the company ‘in any way’ on Facebook or other social media sites in which they post pictures of themselves.”  Another policy prohibited “disparaging” or “discriminatory” “comments when discussing the company or the employee’s superiors” and “co-workers.”

According to the NLRB, “Such provisions constitute interference with employees in the exercise of their right to engage in protected concerted activity.”

This view is troubling if only in the sense that these types of policies and provisions are common for companies adapting to social media.  As Bret Cohen of Hogan Lovells wrote recently about the case, “Though such policies are most likely to be invoked when employees post material to the Internet or social media sites that exhibit clear insubordination or disloyalty to the company, the NLRB was clear in expressing its concern for the possibility for companies to use the policies to stifle union-related employee communications.”

The case is set for hearing on January 25, 2011.

That question lingers when reviewing such policies for legal compliance and for consistency with a company’s actual practices.  Problem is, lawsuits involving claims of breaches of privacy policies have failed even in cases of clear and egregious violations by the service provider, where there was an absence of a showing of actual damages.

Eric Goldman cites a number of cases in his blog, including a prominent class action in 2005 against Jet Blue Airlines for voluntarily turning over passenger names to a government contractor, in clear violation of the airline’s stated privacy policy.  Policies commonly permit the service provider to disclose information in response to a government demand.  Yet, Jet Blue won dismissal despite any such disclosure right in its policy.

Or put another way, breach of the privacy policy itself – even an egregious breach – may not be enough to sustain a legal claim.

Goldman and other commentators have written about a January 2009 case involving the Jackson Hewitt accounting firm.  Here, a Jackson Hewitt customer’s tax return (along with those of many other Jackson Hewitt clients) was left in a public dumpster, and then found by a local television station.

The taxpayer plaintiff went to great lengths to demonstrate emotional distress and potential economic damages from the clearly inappropriate (and privacy policy breaching) actions of the accounting firm.  Nonetheless, she lost her case because she was unable to meet the court’s criteria for specific monetary damages.

Goldman’s colleague Ethan Ackerman notes that “a heightened risk of future loss or steps taken to mitigate that loss weren’t enough under Louisiana law for a negligence or breach of contract claim”.

This toothless privacy state of affairs would seem to extend the argument of many new media and privacy law practitioners: no one reads privacy policies anyway, so they’re worth the attention of neither companies nor their customers.  Goldman is less cynical:

In general, I think these opinions have often reached a sensible and pragmatic result that a privacy invasion may lead to no tangible losses, so damage awards may overcompensate the victim or overdeter the defendant.

But he is being literal than serious, since he is at least correct that there may be no tangible losses.  This assumes privacy (and personal information) is a personal property right to be regulated by property law rules like those governing theft of or damage to tangible personal property – i.e. someone steals your car.  Just as much, the rights sought to be vindicated in the Jet Blue, Jackson Hewitt and similar cases were contract rights, arising from claims of breach of privacy policies (which are contracts).  In that narrow sense, the absence of damages should be determinative in litigation, as it generally is a material element to a breach of contract action in the first place.

That gets to the heart of the public policy problem with privacy policies as simple contracts subject to damage awards for breach, and Goldman recognizes this:

However, providing no damages awards – especially when a company breaches its self-selected promises – may under-deter and reward companies for overpromising and underdelivering. This case [i.e. Jet Blue] seems especially odd because the complaint contained allegations of specific tangible harm. Maybe we don’t believe the allegations, but normally they ought to be heard.

More to be said on this subject shortly.