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.

Despite the fact that this practice is officially frowned upon in the Federal Trade Commission’s 2009 endorsement guidelines, companies will often engage paid individuals – either employees on the payroll or outside bloggers who receive compensation in the form of a free sample – to post positive reviews online, including to places like Twitter, personal blogs, or online public forums without identifying the connection between the commenter and the product being commented on.

The FTC’s endorsement guidelines seek (among other things) to ensure that unbiased positive reviews online can be considered credible, while also ensuring that positive reviews that are partially the result of some sort of compensation be acknowledged as such. The FTC’s guidelines encourage not just that bloggers acknowledge compensation, but also that the companies offering the promotion notify bloggers of the guidelines and then ensure that the guidelines are followed.

The New York Times reported last summer on a settlement reached between the FTC and Reverb Communications.  According to the report, employees of Reverb, a public relations firm, were posting positive iTunes Store reviews about Reverb client products. “[Reverb] engaged in deceptive advertising by having its employees write and post positive reviews of clients’ games in the Apple iTunes Store, without disclosing that they were being paid to do so,” according to the article.  The FTC’s settlement with Reverb reportedly included an agreement to remove all inadequately identified iTunes Store reviews, but no monetary penalties or admission of illegal activity.

Also last year, as reported in a post on the Citizen Media Law Project blog, clothing retailer Ann Taylor LOFT sent invitations to bloggers, offering a “fall fashion preview” and “special gift” to bloggers who agreed to write about the event.  The FTC commenced an enforcement proceeding against Ann Taylor LOFT for violation of the blogger guidelines, but ultimately chose not to pursue action, instead noting that the company had incorporated a written policy prohibiting similar conduct in the future.

K&L Gates’ blog on technology, media and technology, ”TMT Law Watch”,  reported earlier this year on another FTC enforcement.  As reported, a musical instruction company called Legacy paid “Review Ad Affiliates” to give positive reviews for site’s musical instruction services.  Those affiliates subsequently failed to provide adequate notice of their material connection with the promoter. “Affiliates received substantial commissions (20-45%) on sales of each product resulting from a referral,” TMT Law Watch reported.  Although Legacy required affiliates to sign a contract committing to follow FTC guidelines, there was no monitoring system in place to ensure that the guidelines were followed.  In its enforcement complaint the FTC stated “that the Affiliates’ reviews were false and misleading, that the failure to disclose the financial relationship was a deceptive practice, and that these acts and practices constituted unfair or deceptive acts or trade practices in violation of Section 5(a) of the FTC Act,” according to the post.

Under its administrative settlement with the FTC, Legacy agreed to monitor and conduct monthly reviews of 100 of its “Review Ad Affiliates,” including the top 50 review producers and a random sampling of 50 more affiliates. Legacy must also institute a system through which payment will be stopped to any affiliate that does not adequately disclose its material connection to Legacy when posting reviews. In addition to a civil penalty of $250,000 and a requirement to notify its employees of the settlement, the Legacy must carry out these reviews of its affiliates and report them to the FTC for the next 20 years.

Some companies have taken measures to preemptively ensure compliance with the FTC guidelines. For example, AdAge reported earlier this month on an undertaking by the social media influence ranking site Klout to provide free products to people with significant social media influence. Aan ccording to AdAge, the initiative would provide products, or “Perks,” to those with large influence on social media outlets. “Klout addresses the FTC rules by sending a card along with the ‘Perk’ that states that recipients aren’t required to do anything at all,” AdAge reported, “but they should disclose that they’ve received a sample if they decide to write about it.”

A question is whether this kind of passing the buck to bloggers (“you’re on notice that you shouldn’t do anything we wouldn’t do”) really complies with the guidelines, much less the spirit of the guidelines.  The Legacy case raises the specter of enforcement proceedings against companies for failing to adequately monitor compliance.  But generally, evidence of compliance should be able to be found in actual resulting conduct. As Forbes noted last year, it can be difficult to measure the impact of the guidelines when the intent isn’t clear. An FTC director was quoted by Forbes, “Our goal is not to bring enforcement actions. [Our goal is] to help people be educated so we don’t have to bring enforcement actions.”

***

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

By definition, citizen journalism’s inherent difference from the traditional editorial process is the dispersion of responsibility for editorial choice.  Nonetheless, “trustiness” in journalism is a concept still heavily dependent on a reporter’s or editor’s reputation.  Is the New York Times trusted because it’s trustworthy?  Or is it trustworthy because it’s trusted?

The “Generated By Users” journalism blog recently reported the results of its reader poll, “Do you TRUST user generated content in news?”

[O]verall we like [user-generated content] but remain skeptical and need to know that it is trustworthy and adding value and perspective to reports. In an ever more connected world we can rely on UGC for immediate breaking news, but we want experienced journalists to sum up the day; if that requires using some UGC then we are fine with that, but it must be combined with original professional content.

Crowd-sourced citizen journalism attempts to bridge the gap between the historical (back to 2003 or so) understanding of “citizen journalism” and more recent efforts to create “virtual” news operations.  So, for example, in 2007 the US State Department’s blog America.gov wrote thoughtfully about the movement of established news organizations – the BBC, CNN and Le Monde were favorably cited – to integrate video, blogging and other raw reporting coverage of breaking news events into regular news reporting.  This trend had “becom[e] more of a dialogue between the providers and receivers of information, rather than an imposition of opinions and perspectives by an elite caste.”

Still, reporting is being collated (an unfair characterization?) by established media into seemingly traditional reporting.  Or, better yet, the explosion of number, variety and depth of sources of news could make the producing of established reporting – digesting, analyzing, summarizing and storytelling – that much better-sourced in the hands of writers, reporters and editors who know how to bring it all together.

Crowd-sourced journalism is not without downsides.  From America.gov’s 2007 report:

On the negative side, the Internet has opened up extraordinary new possibilities for the widespread and sometimes dangerous manipulation of information, which is difficult, if not impossible, to stem.  This phenomenon will increasingly place a heavy responsibility on professional journalists to maintain high standards of fact-checking, honesty, and objectivity. Editors are already spending enormous amounts of time verifying and authenticating user-generated pictures and text, and this will only become a more time-consuming part of their jobs. Blog posts and comments require careful and regular scrutiny.

It is true that the explosion of sources of information – just like the avalanche of the raw information itself via wide, public availability of data – makes the jobs of journalists more complex, but that may not be all that much of a change.  Reporting has always required judgment calls by reporters on the quality of and proper weight to be given to sources.  The difference now is the number of sources of where information is coming from, and who has the ability to monitor how it is used.

If a structural problem for “citizen journalism” is an inability to generate consistency in quality – “editorial standards” – why not remedy that problem with some of the same technology that makes citizen journalism possible in the first place?

That is the approach of a number of projects discussed in a recent Columbia Journalism Review article, including “Citizenside”, “Digital Journal” and “NowPublic”.  These sites use concepts from online gaming, including point tallies, rankings and accompanying cash and non-cash rewards.

Borrowing these techniques from online gaming may prove advantageous to reward those who produce quality content.  A recent panel during Washington, DC’s “Digital Capital Week” (DC Week), on “The Future of Publishing”, featured Washington, DC-based NewsIt, a self-described “mobile sharing network for creating and sharing news”.  Like its competitors discussed by CJR, NewsIt espouses the “gamification” of news, using math to rank “top citizen correspondents”.  The technology is built on an algorithm, and the distinguishing characteristic seems to be the strength (or weakness) of that particular algorithm to discern quality reporting.

Such an algorithm necessarily chooses different factors from the comparable calculi of competing services, and then weights those factors in whatever unique way chosen by its proponent.  The idea is terrific for setting up predictability for news sourcing, though it seems also vulnerable to its own being “gamed” (irony not intended) by users who can figure out the system.  Of course, that, too, is hardly news, as demonstrated by other algorithm-based services like Google Search, constantly tweaking its formula to stay ahead of the gamers.

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

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

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

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

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

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

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

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

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

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.

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.

In a past post, we wrote about copyright as it relates to how preemption of state law civil causes of action in the same or related cases.  In writing about the Perez Hilton and NFL Films cases, we noted that federal copyright law did not preempt applicable state laws (specifically, “hot news” and right of publicity claims) because the rights claimed under the state laws were not equivalent to the rights protected by the Copyright Act.

Put another way, federal copyright preempts state law claims where the rights sought to be enforced under the state claims do not necessarily match those protected by the Copyright Act.  In those cases, the rights protected by copyright – reproduction, performance, distribution or display of the work – were distinguishable from the rights protected by the state law claims.

A 2008 North Carolina case offers a counter example, involving failure to show that a state law added some unique element outside of the rights protected by copyright. The case, Rutledge v. High Point Regional Health System, F.Supp.2d –, 2008 WL 2264239 (M.D.N.C.) shows how claims under state law can only avoid copyright preemption if they are “qualitatively different” from copyright law.

Rebecca Tushnet, a Law Professor at Georgetown University Law School, wrote extensively about the case, and her commentary is here.

Plaintiff was Rutledge, a physician who developed a unique gastric bypass weight loss procedure.  Rutledge registered federal copyrights for the procedure and the accompanying processes, documentation and so forth.

There was no issue in the case about whether Rutledge’s copyright claim was valid, but rather whether he could also pursue North Carolina state law unfair competition claims (under the North Carolina Unfair and Deceptive Trade Practices Act) against a group of physicians who he claimed misappropriated his copyrighted works.

Unlike the hot news and right of publicity cases, there was no question as to whether the works involved were being used by another party for commercial purposes.  Instead, the question was whether Rutledge’s claim under the North Carolina Unfair and Deceptive Trade Practices Act (UDPTA) added that unique element outside of those rights protected by the Copyright Act.

The court noted that, “Where courts have found an extra element sufficient to avoid preemption in this context, the record frequently, but not always, reflects a separate cause of action alleging the additional claim (and thus elements) upon which the unfair competition claim is predicated.”

Rutledge claimed that the extra elements in this case were “misrepresentation” and “deception”, because the defendants misrepresented the copyrighted materials as their own, altered the materials, surreptitiously posted them on the Internet, and used the materials.  Rutledge argued that these constituted the necessary unique element to survive a preemption challenge to his state law unfair competition claim.

The court, however, found that the misrepresentation claim was “the natural consequences of a Copyright Act violation.”  Rutledge “neither has a free-standing cause of action for misrepresentation upon which to rest the UDTPA claim, nor are the acts upon which he predicates his UDTPA claim different from those giving rise to the Copyright Act claim such that the UDTPA claim would be qualitatively different from the Copyright Act claim.  Thus, the UDTPA claim is preempted.”

In plain English, the court found that the plaintiff’s claims of what the defendants had done amounted to restatements of the same claimed copyright violations – and since already covered by copyright, were therefore preempted.

This is a fairly broad reading of copyright preemption, in that it relies heavily on the claims being based on the same set of underlying facts, rather than involving independent facts giving rise to independent claims.  That alone would seem to eviscerate any realistic ability to escape a preemption claim when a copyright issue is involved, since the same set of facts will presumably be shared across the set of state and federal claims.

It seems likely that the plaintiff’s reliance on state unfair competition was based on the weakness of copyright as a viable remedy in this case, where ideas and expression were intermingled in the alleged infractions and infringements.  Copyright, of course, protects the expression of ideas rather than the ideas themselves.  Where the misappropriation involved “how” to do something rather than the physical thing itself, the remedies for breach may be severely limited.

This may further explain the court’s reluctance to enforce Rutledge’s claims, perhaps viewing his reliance on unfair competition as a backdoor to obtain copyright protection for the ideas themselves.

As Professor Tushnet writes,

Plaintiff also alleged use of the materials to perform medical treatment.  The court treated this as an allegation of use of the ideas, rather than the expression. The Copyright Act bars protection for ideas, and as part of that preempts idea claims like this where no contractual violation is alleged. (Depending on the claims, “use” could also mean simply consulting the materials, which implicates no copyright rights but is allowed by the first sale doctrine.)

What’s a Mashup?

First: What are mashups?  From WiseGeek:

A mash-up is a combination of tools or data from multiple sources. Mash-ups typically collect data from multiple web pages and bring their information into one simplified web application.

Mashups are common in the application development world, but also common in music and videos, and examples are legion (and some notorious).  In particular, a music mashup is (according to Squidoo) …

when the vocals from one song are laid over the music of a second song to create a mashed up version that’s both but neither.  If a good job is done, it enhances the original music.

Actually, the last part of that definition is most critical to a fair use analysis.  I recently wrote about fair use in the context of the republishing of copyrighted photographs or artworks in a magazine, book or electronic publications.  But the question there of whether the use of copyrighted material is “transformative” applies equally to music or video mashups.  And so the question is still whether the mashup is “transformative”.

What is “transformative”?

A popular explanation of a “transformative” use came in a 1994 Supreme Court case:

… 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).

Examples

Parody.  Parody is transformative.  So, for example, MoveOn.org’s mashup “Stop the Falsiness”, a parody of Stephen Colbert’s “truthiness”.  The very clear purpose was parody, a well-established fair use.  MoveOn’s mashup uses a number of Colbert clips, and the clips are interspersed with commentary.  The result is a new or “transformative” work with a different purpose than the original.

Educational or Informational.  An educational or information tool can be transformative.  So, for example, “A Fair(y) Use Tale”, a mashup made by a law professor to illustrate the fair use doctrine, which includes some famous Disney animation clips.  The author takes the individual Disney clips and combines them in a new (i.e. “transformative”) way to educate and inform, albeit informing about the subject of fair use itself.

Other Examples.  American University’s Center for Social Media has a terrific online debate about “fair use” with video mashups, with numerous excellent examples.  Included is a funny mashup coupling ABC News moderators from a 2008 Presidential debate with New England Patriots coach Bill Belichick.  Belichick is shown being asked (and “answering”) questions about the Afghanistan war, the real estate mortgage crisis and President Obama’s former Chicago Pastor Jeremiah Wright.

MTV’s Movies Blog created this hilarious mashup with “Jersey Shore” star Angelina Pivarnick being substituted for Angelina Jolie in the new film “The Tourist”.  (Full disclosure: I’m from New Jersey but I have no idea where these people from “Jersey Shore” came from.)

Amount of the Use

Among other judgment criteria for fair use, a still important but somewhat lesser factor for mashups is the amount of the copyrighted material used.  While a video or music mashup can be justified as fair use if the use – alone or in combination with other samplings – is “transformative”, there is still the question of whether the amount of the copyrighted material used was only so much as reasonably necessary for the fair use purpose.  Like the question of whether a use is “transformative”, there are no hard and fast rules for how much is too much.  On the other hand, the amount of the use (“the amount and substantiality of the portion used in relation to the copyrighted work as a whole”, 17 U.S.C. § 107) is a factor in the determination of whether a use is transformative.

As a practical matter, one is less – much less – likely to attract fair use trouble if the uses of the copyrighted works are narrow and limited.  So, for example, in MoveOn’s “Stop the Falsiness”, the copying of the Colbert clips is many in number, but short in length.

On this same point of “amount and substantiality of the portion used in relation to the copyrighted work as a whole”, the 2004 case of Bridgeport Music, Inc. v. Dimension Films, 383 F.3d 390 (6th Cir. 2004) involved a defendant who was successfully sued for copyright infringement despite having copied just one chord of a George Clinton song.  However, the defendant did not raise fair use, instead relying on a “de minimus” argument about the amount of the use, which failed.

Short answer: When the previously copyrighted works are the subject of the republishing.

Fuller answer: An “editorial” republishing, almost by definition but with important caveats, satisfies the “fair use” test under the Copyright Act in 17 U.S.C. § 107, in particular by meeting the Act’s four-factor (nonexclusive) criteria:

(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.

An analogous, common example is a newspaper or blog book review, quoting heavily from the reviewed book in order to illustrate the reviewer’s criticism.  As Federal Judge Pierre Leval wrote in Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1110 (1990),  “Quoting is not necessarily stealing.  Quotation can be vital to the fulfillment of the public-enriching goals of copyright law.”

Judge Leval is quoted extensively in a recent case involving a magazine publisher who republished copyrighted illustrations of monsters, in a biography and retrospective on the illustrator.  Warren Publishing, plaintiff and owner of the copyrights in Warren Publishing Company v. Spurlock, 645 F. Supp. 2d 402 (EDPA, 2009), brought the case to challenge Spurlock’s republishing of the copyrighted but out-of-print illustrations.  The court granted Spurlock’s summary judgment motion based largely on a fair use defense.

The Warren Publishing case draws heavily on Judge Leval’s fair use formulation, particularly the purpose and character of the use (Factor (1) above).

The book review is one of those situations where no serious copyright infringement challenge would ever be filed, even with such extensive quoting as is commonly done, if only because the practice is so imbued in the journalistic, publishing and First Amendment cultures.  Nonetheless, historical practice need not be relied upon alone.  In fact, the four factors are merely illustrative of the main text of fair use, 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)

Criticism, commentary, news reporting, teaching, scholarship and research are the core of fair use.  These types of uses are not exclusive examples of fair use, but they are the uses “thought necessary to fulfill copyright’s very purpose ‘[t]o promote the Progress of science and useful Arts ….’” .  Warren Publishing Company v. Spurlock, 645 F. Supp. 2d 402 (E.D. PA, 2009) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const. Art. I, § 8)).  They are the core uses that justify the existence of the fair use defense.

In Warren Publishing, the defendant successfully argued fair use on these grounds, based on the four fair use factors:

(1) The purpose and character of the use. The court notes that the defendant’s book – a biography of the artist and retrospective of his work – “presents these [copyrighted] images for an entirely different purpose” than the plaintiff’s original use.  The plaintiff was a magazine publisher whose magazine chronicled the world of movie monsters, rather than particular focus on any illustrator.

The term “transformative” is frequently applied to illustrate the first fair use factor, quoting from a 1994 Supreme Court case:

… 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).

Of particular significance was the defendant’s commentary on the artist’s work.  As discussed, commentary and criticism are core elements of the fair use defense.  Significant to the court’s fair use finding was how the copied works were accompanied by – and clearly used to illustrate – commentary about the artist and his work.  Commentary and criticism support a claim that a potentially infringing work is “transformative” rather than “merely supersed[ing] the objects of” the copyrighted work.

The first fair use factor also states “whether such use is of a commercial nature or is for nonprofit educational purposes”.  The commercial nature of a work – including the Warren Publishing defendant’s commercial use – is a factor but only a factor.  Quoting the Supreme Court in Campbell, the court writes “[T]he mere fact that a use is educational and not for profit does not insulate it from a finding of infringement, any more than the commercial character of a use bars a finding of fairness.” Campbell, 510 U.S. at 584, 114 S.Ct. 1164.

(2) the nature of the copyrighted work. This factor typically focuses on the creative nature of the copyrighted work as compared with more fact-based works.  So, for example, nonfiction books tend to get less protection (all things otherwise being equal) than fiction, the thinking being that the more creative the work the more need for copyright protection.  In Warren Publishing, there was no dispute as to the creative nature of the copyrighted works.  However, the works were largely out-of-print, a factor which generally weakens a plaintiff’s copyright infringement case – and strengthens a fair use defense.

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole. This factor looks at both the quantity of the materials used and the quality of the material used.

In Warren Publishing, a threshold issue was whether the individual illustrations – each individually copyright-protected – should be the focus of the infringement, rather than the whole magazine issue from which the works were taken.  Obviously, using the individual copyrights as the test would have meant a 100% amount of copying, while looking to the artworks only as part of a whole meant something different entirely – in this case, 1-1.5% of each of Warren’s magazines.  The court sided with the defendant.  As defendant’s counsel later wrote, “if this Factor/Test [were] to have any meaning at all, it must, logically be an analysis which looks at the entire Copyrighted Work as Registered and as claimed, not just a portion thereof, even if, in theory, that portion could have been copyrighted on its own.”

As noted, this 3rd Factor relies both on quantitative and qualitative views of the amount of copying made.  The Supreme Court weighed in on this Factor as well, asking in Campbell whether the amount of copying was “reasonable in relation to the purpose of the copying.”  As with much of fair use law, these “clear” standards are anything but clear, but there is vast case history.  In my article, Fair Use and Online Publishing, I offer these examples:

Not fair use.  The Nation published 300 words from former President Gerald Ford’s soon-to-be-published 200,000-word memoir.  Publisher Harper & Row sued.  The Supreme Court held that this was not a fair use.  In light of Harper & Row’s intended serialization of the Ford memoir to Time magazine, leak of these 300 words on the Nixon pardon seriously threatened the value of the serialization to Time and Harper & Row.  Harper & Row, Publications, Inc. v. Nation Enterprises, 471 U.S. 539 (1985).

Fair use.  The Associated Press published, without permission, photographs of Oliver North taken from a sales brochure for body armor.  The photographs were used to accompany a related AP news story.  The court upheld fair use because of AP’s news reporting use of the photos together with North’s status as a public figure.  Mathieson v. Associated Press, 23 U.S.P.Q. 2d 1685 (S.D.N.Y. 1992).

(4) Final factor: the effect of the use upon the potential market for or value of the copyrighted work. This factor is sometimes affected by the other factors, and sometimes not.  For example, the quality of copying – although not the amount – was relevant to an analysis of this fourth factor in cases involving the videotaped beating of Reginald Denny in Los Angeles in 1992, where a local television station broadcast 30 seconds of the 4 minute 40 second video.  The court found that the 30 seconds was the “heart” of the work and had a serious effect on the owner’s market for the copyrighted work. (“Although KCAL apparently ran its own voice-over, it does not appear to have added anything new or transformative to what made the LANS work valuable—a clear, visual recording of the beating itself.”)  Los Angeles News Service v. KCAL-TV, 108 F.3d 1119 (9th Cir. 1997).

In Warren Publishing, the court looked at the effect of the copying on the plaintiff’s market for derivative works, in particular a proposed coffee table book that included the copied illustrations.  Significantly, Warren had held the copyrights for more than 20 years during which time it had taken no steps toward developing any such book, and in fact did so only upon commencement of this case.  This obviously makes Warren Publishing a weak case to support a plaintiff’s argument about the market effect of an alleged infringement.

Another case cited in Warren Publishing is Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006), involving a coffee table book about the history of the Grateful Dead.  In Bill Graham, despite the plaintiff’s plausible argument about the diminished market for licensing the copied concert posters, the court was dismissive of this fourth factor, writing that “copyright owners may not preempt exploitation of transformative markets.”

In other words, the “transformative” nature of a defendant’s copying – the “soul” of fair use, in Judge Leval’s words – can in and of itself be the determinative factor.

What types of activities must be monitored and policed?  Infringement and dilution.  Or in other words, any third party uses of the same trademark or confusingly similar versions that might cause confusion in the marketplace about the source of the goods or services represented by the trademark.

Trademark Duty to Monitor and Police

2 basic reasons to monitor and police: First, the government won’t do it for you.  The Trademark Office is actually quite explicit about stating this, see here.  Second and more to the point, unchallenged third party uses of a trademark could legally – and actually – weaken the strength of the trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark.

I previously discussed the problems raised by generic or descriptive trademarks, types of marks that cannot even be registered under trademark in the first place, or at best only under the trademark office’s Supplemental Register (rather than the Principal Register), with its very limited protection.

Sustained multiple common uses of a trademark risks the mark being deemed – or actually becoming – in-distinctive or descriptive of a class of goods or services, rather than being principally identified with the owner of the trademark.  (I previously suggested the example of “KLEENEX”.)

And that neatly sums up the real reason why monitoring and policing is so important: Not only can common usage of your name or brand prevent you from obtaining trademark registration in the first place.  Indeed, registration can be lost or (more practically) made worthless by a prospective inability to enforce.

The duty to monitor and police is not a statutory requirement under the federal Lanham Act or any similar state law.  Nonetheless, good trademark practice and intellectual property asset management demands attention to it.  In rejecting or sustaining trademark owners’ claims of infringement, published caselaw involving some prominent trademarks has relied on evidence of a trademark owner’s failure to perform the duty (Hard Rock Café Int’l (USA) Inc. v. Morton, 1999 U.S. Dist. LEXIS 13760, No. 97 Civ. 9483, 1999 WL 717995 (S.D.N.Y. Sept. 9, 1999)) or a trademark owner’s successfully performing that duty (Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004)).

How to Monitor and Police

A good primer on this subject, including various avenues of monitoring and policing, can be found here from a cyberlaw class at the University of North Carolina Law School.

Many companies offer trademark monitoring services, including large data firms like Thomson Compumark and Trademark Express.  Intellectual property law firms also provide this service to clients, including my firm and many others.  Organizations with large intellectual property portfolios often dedicate in-house legal or paralegal staff to the process.

As many commentators note, monitoring for and early detection of infringing uses can be cost-effective in nipping problems in the bud, simply by facilitating contact with potential infringers early in the life of their infringing use, and thus presumably at a lesser level of investment and other commitment to their continued infringing use.

Since there is no statutory requirement to monitor and police, the required scope of the monitoring is nowhere mandated.  Nonetheless, certain procedures are commonplace.  These include:

1. Regular monitoring of the US Patent and Trademark Office’s trademark database, Trademark Electronic Search System (TESS), on a regular, scheduled basis.

2. Prominent use of the “®” symbol for registered trademarks, and “TM” or “SM” symbols for unregistered (or pending registered) trademarks, on all public uses of your goods or services, to formally establish your own public claims on your marks.

3. Establishing and implementing a company-wide trademark usage policy.  This is typically made part of a company’s Personnel Policy or Employee Manual, though sometimes separate.  The trademark policy alerts all company management, staff, vendors, business partners, contractors and subcontractors, agents, and others on both the rights established by the company’s marks and proper usage of the marks.

4. Conducting a thorough search of your trademarks in the top internet search engines (Google, YouTube, Yahoo!, Bing and AOL), on a regular, scheduled basis.

5. Setting up Google Alerts to automatically monitor trademarks.

6. Contacting potentially infringing third parties to alert them of your trademark rights, and requesting compliance with changing or stopping usage.

7. Sending “cease and desist” letters.

8. As necessary and appropriate, and commensurate with cost and situational expectations, commencing legal action.