Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

Inverse Ratio = Logical Confusion

We’ve got a mouse living under our kitchen sink. I’ve been trying to kill it, but now I’m wondering if I couldn’t use as it pet therapy. It doesn’t seem to be helping with my anger management.

We also have a gopher! It’s ruining the back yard. I bought some device to kill it: basically a smoke bomb that you light and then quickly bury into the sucker’s hole. It has a fuse that lights — and progresses — remarkably and comically quickly. After buried, you can hear the device fizzing and smoking in the hole for seems like a really long time. It’s suppose to suffocate the rodent. I’ve tried 3 of them. They don’t work, but they’re really fun.

Speaking of pests and the fun they can bring, back to the plaintiff one of my music copyright cases. We’ve moved for summary judgment, and plaintiff has opposed (naturally). One of plaintiff’s arguments is interesting. Although I told the court to assume access for purposes of this motion, the plaintiff has tried to make an issue out of access, and more particularly out of access in light of the 9th Circuit’s unique take on the “inverse ratio rule.”

Now, some foundation. (While you already know this, I repeat it merely to give you an excuse for reading this blog when your boss asks what the hell you think you’re doing, surfing the web when you’re supposed to be billing.)

To establish a claim for copyright infringement, a plaintiff must prove “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 361 (1991); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (“A copyright plaintiff must prove (1) ownership of the copyright; and (2) infringement-that the defendant copied protected elements of the plaintiff’s work.”). A plaintiff must prove that the infringer copied the plaintiff’s work either through evidence of: (1) direct copying or (2) circumstantial evidence of copying, i.e. access and substantial similarity. Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 316 (9th Cir. 2004).

The Ninth Circuit uses a bifurcated extrinsic/intrinsic test to determine whether two works are substantially similar. Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004) (“In determining whether two works are substantially similar, we employ a two-part analysis: an objective extrinsic test and a subjective intrinsic test.”). Proof of access, however, “has no bearing on whether two works are substantially similar.” Smith v. Jackson, 84 F.3d 1213, 1220 (9th Cir. 1996).

Now, against this legal backdrop, assume a plaintiff attempts to create a question of fact by raising the issue of access. Specifically, assume the following “plaintiff-four-step,” which goes like this: plaintiff randomly and broadly sends a CD with plaintiff’s music to, among other, various record company execs (step one); record company execs allegedly have “close relationship” (their conclusion, not mine) with artists/defendants (step two); and therefore plaintiff concludes that defendants had a “high degree” of access to plaintiff’s work (the third step in this clumsy dance). Then, like a square dance gone out of control, under the Ninth Circuit’s version of the inverse ratio rule, step four is – according to plaintiff – that they have a lower burden of proof on substantial similarity for purposes of establishing infringement. A bit circular, yes, but full marks for creativity.

Which brings me to the inverse ratio rule. Now, all circuits have addressed the inverse ratio rule , albeit from a more standard approach. That is, they have held that if a striking similarity is shown to exist between two works such that the only possible explanation for this is copying, access may be presumed. That makes sense.

The Ninth Circuit, however, flips this rule on its head, having ruled that when a high degree of access is shown, evidence of similarity may lowered. Lowered by how much? Hey! Don’t go getting technical. The answer is no one knows. Under the Ninth Circuit’s lopsided articulation of that rule, “it is impossible to quantify this standard.” Sid & Marty Krofft Television Productions, Inc. v. McDondald’s Corp., 562 F.2d 1157, 1172 (9th Cir. 1977) (emphasis added); see also Gable v. NBC, 727 F. Supp. 2d 815, 824 n. 3 (C.D. Cal. 2010), aff’d, — F.3d — (9th Cir. 2011) (“Even in cases in which the inverse ratio rule applies, it is not clear just how much less the showing of substantial similarity need be, given the high degree of access shown.”) (emphasis added). That’s part of the problem with this rule in the Ninth Circuit. Another is that the Ninth Circuit’s interpretation is based in part on an incomplete quotation from Nimmer on Copyright found in Shaw v. Lindheim, 919 F.2d 1353, 1361 (9th Cir. 1990). In that case, court cited to Nimmer for the proposition that: “it must logically follow that where proof of access is offered, the required degree of similarity may be somewhat less than would be necessary in the absence of such proof.” However, two sentences later, Nimmer says that “[n]either may a showing of substantial similarity ever be avoided.” Melville B. Nimmer & David Nimmer, NIMMER ON COPYRIGHT § 13.03 [D] (2011). In other words, even with a “high degree”of access, a plaintiff must still establish substantial similarity between the works at issue.

The rule as applied in the Sunny Circuit has no logical application and illogically assumes that any degree of access necessarily results in some degree of copying. As William F. Patry notes: “while it is true that one cannot copy something to which one does not have access, it is also true that one can have complete access to a copyrighted work (indeed have it pasted on the wall of your office when creating your own work) but not copy that work. No degree of access necessarily leads to any degree of copying. The inverse ratio theory is based on a false postulate.” William F. Patry, Patry on Copyright, § 9:91 (2011) (emphasis added).

Patry hits the nail on the head. Here’s my own analogy: In my office, I have hanging several pieces of artwork. One piece, measuring about 4 feet x 4 feet, is a work of photorealism dating to the late 1960s. Its subject: a VW smashing through a Shell Oil logo (e.g. as if it were a still taken from the Shell Oil television commercials of the late 1960s – some of you will remember them). Another, measuring about 4 inches by 4 inches, hangs on an adjacent wall. It is an illustration done by a friend which appeared in the Wall Street Journal in 2008. My friend had seen the VW painting on my wall prior to creating his work in 2008. He had seen it many times, in fact.

My friend’s work does bear some similarities to the VW piece: it uses a light blue for the background, it has points where the black in the image is immediately adjacent to the white in the image; it conveys a sense of movement, speed and surprise. Other than that, they are dissimilar: my friend’s piece shows a man falling off a cliff, holding an umbrella, with an anvil falling just above him, on which the word “Taxes” appears. (The image was published in the midst of the early on-set of the financial crisis.) In other words, although my friend had full, 100% access to the VW painting, it does not mean that when comparing the works we can assume copying or substantial similarity. Looking at them, and not withstanding the similarities I mentioned, they are nothing alike. If one were to accept the loopy notion that 100% access concomitantly drops the necessary showing of substantial similarity to prove infringement, you would have to conclude that my friend infringed the VW painting when creating his work. Makes no sense. Well, that’s litigation.

And now we wait to hear what the judge says. In the meantime, I’m going to buy some more mouse traps, maybe hire an exterminator, and — just in case — take down all the artwork in my office.

Jonathan Pink is an intellectual property attorney specializing in copyright, trademark, entertainment and media matters. He chairs the Entertain and Media group at Bryan Cave, LLP. He can be reached at 310-576-2100 or 949-223-7173, or by email at jonathan.pink@bryancave.com

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

And The DMCA is BACK!

And the Pink is back! Hey, I’ve been busy. But this is big, so it’s worth writing about.

Yesterday, the Ninth Circuit ruled that the DMCA (the Digital Millennium Copyright Act) indeed protects user-generated-content sites, or Veoh Networks in this particular case, from liability for copyright claims where the evidence showed that the UGC site did not know of the infringement and could not control it.

The plaintiff in that case, Universal Music Group Inc. cannot be too happy. I would suspect a further appeal, especially because the 9th Circuit’s ruling follows: (a) it’s earlier ruling on this issue which reached the same conclusion; (b) the Second Circuit’s ruling in Viacom v. YouTube which reached a different conclusion on similar facts; and (c) a rehearing on this issue in light of the Second Circuit’s conflicting ruling.

That’s a lot of legal ping-pong, but here’s what it means for owners of sites that rely on user generated content (at least in the 9th Circuit, and at least for now):

Internet service providers who fail to seek and destroy (OK, remove) allegedly infringing materials of which the ISP does not specifically know will NOT lead to liability; the safe harbor provision of the DMCA will render these ISP safe. In the harbor. Which is why it’s called a “safe harbor.” As opposed to “we’re-gonna-nail-your-ass-no-matter-what-the-damn-statute-says,” which is not nearly as catchy but does have some appeal especially after a couple of cups of coffee.

For those just back from Pluto, as the name implies, the safe harbor provision of the DMCA states that online service providers cannot be held liable for copyright infringement by users where the OSP does not have actual knowledge of the infringing activity, or is unaware of any other information that would make the fact that such infringement exists readily apparent. See 17 U.S.C. Section 512 I

In many ways, this is simply fair, although it is also a huge a departure from the typical approach to copyright infringement, which holds that even innocent infringers are liable for infringement. See Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000).

It’s interesting to note that the Court in Veoh did not trash the Second Circuit’s ruling in YouTube. Rather, it held that the Second Circuit was correct in its ruling, but went on to say that even under the Second Circuit’s interpretation of the DMCA, Veoh was shielded from liability for its hosting of the copyrighted music videos posted its users. Specifically, the Court reasoned that Veoh promptly removed infringing material when it became aware of specific instances of infringement,” and that under the plain language of the statute, service providers who “do not specifically know [infringing materials] should not suffer the loss of safe harbor protection” simply because they have not sought those out and removed them without notice. “Merely hosting a category of copyrightable content, such as music videos, with the general knowledge that one’s services could be used to share infringing material, is insufficient to meet the actual knowledge requirement,” the court said. Rather, a service provider must know of the infringement and have the ability to control it. What does this mean? That a service provider must “exert substantial influence on the activities of users.” Simply having the power to delete infringing content is not enough.

That’s pretty powerful language, and another reminder of the state of the universe for content creators.

Jonathan Pink is a business and intellectual property attorney at Bryan Cave, LLP where he tries cases for rock stars, film makers and media companies. He leads the firm’s Entertainment and Media Practice and can be reached at jonathan.pink@bryancave.com or by calling 310-576-2258.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Like a Candle in the Wind — Ninth Circuit Snuffs Out the Appeal Filed by the Monroe Estate’s

With Apologies to Elton John . . .

Well goodbye Norma Jean, the Ninth Circuit has now affirmed that your estate is estopped from asserting your rights of publicity, though they never knew you at all.

You had the grace to hold yourself while the Ninth Circuit crawled out of the woodwork and whispered that 4 decades of prior judicial positions taken by your estate supported the court’s finding that you lived in the Big Apple at the time of your death (rather than in that little house, on the little Helena, in Brentwood). They crawled out of the woodwork and whispered into your brain that New York does not recognize posthumous publicity rights. See Milton Green Archives Inc. v. Marilyn Monroe LLC, Case Nos. 08-56471, -56472, -56552 (9th Cir., Aug. 30, 2012) (Wardlaw, J).

And it seems to me that you lived your life/Like a candle in the wind/Never knowing – when your estate sued the Milton Greene Archives claiming ownership over your rights of publicity that in California — that while Civil Code Section 3344.1 would have permitted your right to pass your publicity rights to your estate through the residual clause in your will, your estate would argue you lived elsewhere.  And now that it would be judicially estopped from arguing you were domiciled in Brentwood when died. Nor could know that when your estate appealed, though the justices would have liked to have known you (though they were just kids), that appeal would burn out long before your legend ever did. 

(Ugg — ok, I know this is a stretch — work with me, here!)

Oh the press still hounds you as all the papers say the lower court got it right, and the 9th affirmed, finding that your estate is estopped given that it argued from 1962 until 1989 that you were a New Yorker (at the time of death).  So shut out from California (as Elton sang), loneliness remains the toughest role you ever played, and pain the price you paid.  Yep, the court ruled that privity lies between an estate’s administrator and its beneficiaries (for estoppel purposes), such that the representations the administrators made are attributable to – and cannot be rejected by – the estate itself.

So goodbye Norma Jean, and goodbye to the millions your estate might have made from your publicity rights.  This, from the lawyer on the 22nd floor who sees you as something more New York’s native child.

Ok, back to work.

Jonathan Pink received his MFA from UCLA’s School of Film and Television (1988), and was an award winning screenwriter before becoming a nationally-recognized, intellectual property and business lawyer. He currently leads Bryan Cave LLP’s Internet and New Media Team, where he has defended artists, writers, publishers, filmmakers, musicians, music publicers and Internet companies against copyright, trademark, rights of publicity and other intellectual property claims.  Jonathan co-led the defense in a series of copyright infringement lawsuits asserted against one of the biggest bands in the history of pop music, and currently represents clients ranging from globally recognized media corporations, to a broad spectrum of content creators.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

The Sound and the Fury of William Faulkner

Without disparaging anyone for filing a really silly complaint, you do have to sit up and take notice of this one. And probably scratch your head while you’re at it.

The basic scoop is this: Faulkner Literary Rights, the entity that was established to protect and monetize the works by the late, great William Faulkner, has sued Sony Pictures for copyright infringement, violation of the Lanham Act and commercial appropriation, all arising out of Woody Allen’s inclusion of a line in his film, “Midnight in Paris.”

Specifically, as alleged in paragraph 9 of the complaint, Allen’s lead character, portrayed by Owen Wilson, states “’The past is not dead! Actually, it’s not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.’” (Complaint, ¶9.) As alleged in paragraph 10, Faulkner’s actually wrote (in the book “Requiem for a Nun”), “the past is never dead. It’s not even past.” (Complaint, ¶10.)

Really? A claim for copyright infringement based on that? Even the complaint has a hard time putting forth this allegation, stating little more than the plaintiff is the owner of the copyright in the book that contains that line, and that as such it has “the exclusive right to reproduce and distribute” that book and the quote itself. ” (Complaint, ¶16.)

But folks, that’s not the end of the story. There’s much to be said about this, but let’s keep it simple and focus on fair use.

As you may recall, fair use “is ‘a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.’” Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 549 (1985) (quoting H.Ball, Law of Copyright and Literary Property 260 (1944)); Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (“[C]opyright law contains built-in First Amendment accommodations . . . the ‘fair use’ defense allows the public to use not only facts and ideas contained in a copyrighted work, but also the expression itself in certain circumstances.”); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (“The fair use doctrine thus ‘permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.’”); Blanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006) (“Copyright law thus must address the inevitable tension between the property rights it establishes in creative works, which must be protected up to a point, and the ability of authors, artists, and the rest of us to express them-or ourselves by reference to the works of others, which must be protected up to a point. The fair-use doctrine mediates between the two sets of interests, determining where each set of interests ceases to control.”); Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 799 (9th Cir. 2003) (“Recognizing that science and art generally rely on works that came before them and rarely spring forth in a vacuum, the Act limits the rights of a copyright owner regarding works that build upon, reinterpret, and reconceive existing works.”); Abilene Music, Inc. v. Sony Music Ent., Inc., 320 F. Supp. 2d 84, 88 (S.D.N.Y. 2003) (“The affirmative defense of fair use fosters artistic dialogue and influence within the copyright regime by protecting authors’ rights [to] build upon and transform existing works without having to purchase a license to do so.”).
Ok, you get the point.

The fact is I just do not understand how the Faulkner folks get around fair use. Even applying the standard fair use factors set forth in 17 U.S.C. Section 107 gets you right back to: Just what the hell were you thinking, plaintiff?

As you’ll recall, the most important factors have oft been said to be the first and the fourth set forth in Section 107. The first looks at the purpose and character of the defendant’s use. 17 U.S.C. § 107(1). See Wright v. Warner Books, Inc., 953 F.2d 731, 736 (2d Cir. 1991) (“there is a strong presumption that factor one favors the defendant if the allegedly infringing work fits the description of uses described in section 107″).

To this end, a primary issue under the first factor is whether the infringing work is transformative or merely supersedes the need or the market for the original. See Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132, 142-43 (2d Cir. 1998) (book containing trivia questions about copyrighted television program not sufficiently transformative). A transformative work is generally held to be one which “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message. . . .” Campbell, supra, 510 U.S. at 579 (1994); Warner Bros. Entertainment Inc. v. RDR Books, 575 F. Supp. 2d 513, 541 (S.D.N.Y. 2008) (“Courts have found a transformative purpose both where the defendant combines copyrighted expression with original expression to produce a new creative work . . . and where the defendant uses a copyrighted work in a different context to serve a different function than the original.”).

Well isn’t that what Woody Allen did here? It’s not like “Midnight in Paris” superseded or replaced Faulkner’s “Requiem for a Nun.” I’m not even sure how, with a straight face, one could argue that Allen’s work was anything shy of transformative. See A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 639 (4th Cir. 2009) (use can be transformative in function or purpose without altering or actually adding to the original work); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007) (Google’s use of copyrighted images in thumbnail search index deemed highly transformative, though images were not altered, because the use served a different function than the images served); Lennon v. Premise Media Corp., L.P., 556 F. Supp. 2d 310, 324 (S.D.N.Y. 2008) (to be transformative, it was not necessary that defendants alter the music or lyrics of Imagine).

Another important consideration in the fair factors is the fourth, which looks at the risk of market substitution for the original work. See Ty, Inc. v. Publications Int’l Ltd., 292 F.3d 512, 517-18 (7th Cir. 2002) (copying that is complementary to the copyrighted work is fair use, but copying that is a substitute for the copyrighted work is not fair use).

Could it really be said here that Wood Allen copied Faulkner’s material so he could use it for the same purpose as Faulkner intended it to it to be used? I don’t think so. Allen was quoting Faulkner for a concept, an idea, and had the Wilson character both indicate that Faulkner had said it and that he – the contemporary character who had traveled back in time – agreed with it. I don’t see how that could ever serve as substitute for Faulkner’s writing. See Infinity Broadcasting Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (use of infringed radio broadcasts for information rather than entertainment tends to support fair use claim).

Well, it will be interesting to see where this goes. I can’t imagine it getting off the ground, but you never know. Maybe the plaintiff can make this seemingly absurd claim fly. Or maybe the process will just incredibly painful.

Of course, as Faulkner said “Given the choice between the experience of pain and nothing, I would choose pain.”

Jonathan Pink is a media and intellectual property lawyer at Bryan Cave, LLP. He can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Eric Goldman’s Comments on My Post of Last Week Regarding Actress’s Right to Sue for Copyright Infringement

My post of last week regarding the actress in “Innocence of Muslims” suing for copyright infringement generated the following email exchange between me and Eric Goldman, Professor, Santa Clara University School of Law and Director, High Tech Law Institute (http://blog.ericgoldman.org; email: egoldman@gmail.com):

ERIC: I think you breezed over the fixation requirement. Yes, there is a fixation *by someone*, but the requirement is that the fixation be “by or under the authority of the author,” i.e., by the actor. I don’t even see that as a colorable argument. Do you? Eric.

JONATHAN: I thought about that, and about addressing it as an issue, but then concluded (in my own mind) that the fixation was at the request of the actress — she’s consenting to the fixation of her performance by the director/camera man, etc. Maybe the more interesting issue from that POV is what happens when the director/editor has the right to select shots/angles/cut entire scenes and performances. If the artist has given up the right to create the derivative work (because the completed film would, in some ways, be a derivative of the performance), then is that implicit consent that the actress does not own the copyright, or merely a non-exclusive license to create a derivative work?

ERIC: I don’t see how acquiescing to being recorded = embodiment “by or under the authority of the author.”

JONATHAN:  So, by your comment, I think we skip over whether the performance rises to the level of a protectable expression. That is, if we’re talking about fixation as the hang up, then I think we’ve tacitly agreed that the performance, if fixed, is entitled to protection. (If not, I think we get into Horgan v. Macmillan, Inc. 789 F.2d 158 (2nd Cir. 1986 (involving Balanchine’s Nutcracker), and Martha Graham [380 F.3d 624, 632] again.)

As to fixation, I think both of those cases establish that a choreographed work may be fixed by being filmed, video taped or though the use of some written notation system. (See 789 F.2d at 160, n.3 and 380 F.3d at 632 and n. 13.)

So if we agree that fixation can occur, then we’re just down to whether that fixation/embodiment is “by or under the authority of the author.” I think that’s answered largely by a question of fact. Having spent many years on film and TV sets, it’s hard for me to see an argument, made by an actor, that he/she did not consent to the fixation of his/her work. In a professional setting, the actor is being paid for that performance and typically has an expectation of receiving a copy of the finished work (so they’re expecting, desiring, and anticipating fixation, if only to add to their own portfolio). Moreover, the actor hears “action!” and “cut!,” and is there while the camera is set, etc., so he/she usually knows when the camera’s running and he/she is being recorded. They also know when they blow a scene and say — “can we try that again?” or when the director says “let’s try that again,” or the cameraman says” boom in the shot” or the sound guy says “I missed that, I need to start again.” So factually, I think it would be very difficult for an actor to argue that the his/her was not fixed with his/her knowledge.

Consider a situation whether the person on film doesn’t know of the filming: hidden camera or a bootleg recording at a live performance. The law is pretty clear that someone who has been surreptitiously filmed does not consent to the work having been fixed, and thus may sue the person who fixes such an audio/video recording because it was created without the consent of the performer (as in Kiss Catalog, 350 F. Supp 2d at 827-29, and 17 USC 1101). If an unauthorized fixation can give rise to the anti-bootlegging statute, the converse of this must be a permissive/knowing/authorized fixation.

If permissive and knowing amounts to authorized, the performer must also be said to have acquiesced to the recording (factually, it would illogical to conclude otherwise). If so, then acquiescing = embodiment “by or under the authority of the author.”

Your turn.

ERIC: We agree on so much except who benefits from the fixation. Yes, the actor consents to being recorded, but consent alone can’t be enough to say the recording is done “by or under the authority of the author.” Otherwise, wouldn’t the happy couple own the photos from their wedding? Wouldn’t a band own the bootlegs if they consented to having them created? That makes no sense. The actor is not “fixing,” so the “by the author” piece doesn’t apply. The actor has to rest on the recording being “under their authority.” I don’t think consent = authority; I believe it has to be a much more rigorous relationship, like an agency relationship. I’d have to research the legislative history to see what examples they give. Eric.

JONATHAN: Newlyweds have no copyright b/c they weren’t “performing” and under the holding in Burrow-Giles Litho Co. v. Sarony, 111 U.S. 53 (1884) (photographer, not subject, owned copyright based on posing of the subject, selection and arrangement of costume, accessories, etc., use of light and shade and evoking desired expression from subject); Ets-Hikin v. Skyy Spirits, Inc., 225 F. 3d 1068, 1076-77 (9th Cir.. 2000) (same basic holding).

As to band owning bootleg, band would own musical comp; if band consented to recording, e.g. for live album, band owns sound recording absent agreement to the contrary (just like here). If sufficient creativity in that recording (not likely if it is a bootleg), and agreement, then maybe a joint work if that was the intent. Absent that intent and originality evident in the recording itself, I think band owns CR even in sound recording.

Also, one last note, here, the only agreement with the actress was that she’d get credit on IMDB. That suggests to me that she wanted the film (in the formation she thought it take) to be publicized/distributed for her benefit as an actress (an addition credit, or whatever). That would further support my position that she consented/acquiesced to the fixation by the director.

Jonathan Pink received his MFA from UCLA’s School of Film and Television (1988), and was an award winning screenwriter before becoming a nationally-recognized, intellectual property and business lawyer. He currently leads Bryan Cave LLP’s Internet and New Media Team, where his practice focuses on intellectual property and commercial litigation, including arts and entertainment related matters. He is resident in the firm’s Santa Monica and Irvine offices, and can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Actress Claims Copyright Protection In Her Performance; Can You Do That?

A debate is brewing over the film, “Innocence of Muslims.”

Slow down, I’m not talking about the debate over it’s merit, artistic qualities, or even the really important First Amendment issues it presents.

I’m talking copyright. Specifically, whether an actor/actress has a right to assert a copyright interest in his/her performance when that performance is fixed in a tangible medium such as video or film.

That’s the position taken by Cindy Lee Garcia, an actress who appears in “Innocence of Muslims,” the film that has caused rioting, mayhem and murder in the Middle East and beyond.

Garcia is understandably upset about the effects the film has had, and what it has done to her personally. Actors are accustomed to critical reviews, and even to statements like “you her career is over!” But according to a complaint Garcia filed in the California Superior Court, she has received death threats, is “no longer permitted to see her grandchildren” because her family fears for their safety, and was “fired from her job as a direct result of the Film. . . .”

Understandably Garcia wants the film yanked from YouTube.

So she contacted YouTube and asked that they remove it based on her privacy concerns. YouTube declined that request.

As a result, Garcia sued YouTube (along with the film’s director, Nakoula Basseley Nakoula) in state court alleging – among other things — invasion of privacy, violation of California’s right of publicity statute, and intentional infliction of emotional distress.

She also moved for a temporary restraining order, which the court denied two days later.

Five days after that, Garcia dismissed the case, and has now refiled in federal court, this time including in her complaint a claim for copyright infringement.

Back to Garcia’s claim for copyright protection in her performance. Garcia argues that she owns the copyright right interest in her work, even though that work is part of Nakoula’s film. She’s even applied for a copyright registration in her performance (a prerequisite to bringing a copyright infringement action).

If this works, it’s a brilliant move. Why?

Because the Digital Millennium Copyright Act (“DMCA”) gives the copyright owner the right to demand that an internet service provider, such as YouTube, remove that work from its site. See 17 U.S.C. Section 512(c). (It also may give YouTube a way out, if it wants one: Section 512(c) shields an ISP from liability where it acts expeditiously upon receipt of a DMCA-compliant notice to remove or disable access to the material provided it either does not have the right and ability to control the infringing activity, or – if it does – does not receive a financial benefit directly attributable to the infringing activity.)

Which brings us back to: does an actor or actress have a copyright interest in his or her recorded performance? While there is scant law on this issue, I think the answer is yes.

In Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (2d Dist. 1996), the California Court of Appeals held that actors who sought damages and an injunction against the distribution of a film in which they appeared because they had not been paid for their performances, could not assert a claim for right of publicity. Rather, the Court said, that claim was preempted by the Copyright Act, and the actors would have to assert a claim for copyright infringement or breach of contract.

In reaching this decision, Court held that that the “individual performances in the film White Dragon were copyrightable. Since [the actors’ right of publicity claim] seeks only to prevent CBS from reproducing and distributing their performances in the film, their claims must be preempted by federal copyright law.” Id. at 1919.

While Fleet is a state court case, and thus not binding on the federal court’s ruling on this issue, it is notable that federal courts have dipped a toe into this issue as well. For example, in Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010), the Court similarly held that an actor’s right of publicity claim in his recorded performances was preempted by copyright law. A district court in the Western District of Washington came to the same conclusion. In Aronson v. Dog Eat Dog Films, Inc., 2010 738 F.Supp.2d 1104 (2010), the court found federal copyright preemption of a right of publicity claim based on use in a documentary of plaintiff’s video.

Moreover, the position that Garcia’s performance is entitled to protection is supported by the Copyright Act itself. The Act clearly protects dramatic works, pantomimes and choreographic works. See 17 U.S.C. Section 102 (a)(3), (4); see also Ahn v. Midway Manufacturing Co., 965 F. Supp. 1134, 1138 (N.D. Ill. 1997) (digitized movements of martial arts experts and dancer as characters in video games held to constitute choreographic works); Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (choreography protected as a species of dramatic composition).

And fundamentally, “Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression. . . .” 17 U.S.C. Section 102 (a); and see Kiss Catalog v. Passport Int’l Prods, 350 F. Supp. 2d 823 (performers may sue one who fixes the sounds or images of a live musical performance without the consent of the performer, or one who later transmits or distributes the unauthorized fixation of the performance).

So if Garcia’s performance was captured on film, it was fixed, and if Garcia was the “author” of that performance, it would seem to fall within the basic scope of copyright protection. If it does, why can’t she claim copyright protection over it?

One argument might be that she wasn’t the author of her performance, but rather, the director was. (And, beyond this, the Court might also find a policy reason for denying her claim.) These issues were addressed in Aalmuhammed v. Lee, 202 F. 3d 1227 (9th Cir. 2000), albeit not arising out of facts identical to those at issue in Garcia’s claim.

In Aalmuhammed v. Lee, director Spike Lee hired Jefri Aalmuhammed to ensure the accuracy of scenes depicting Malcolm X’s trip to Mecca in 1964. Aalmuhammed coached Denzel Washington, and even scripted some scenes in the film. A couple of years after the film’s release, Aalmuhammed asserted a copyright ownership interest in the film, and sued Lee and the studio that released the film.

The 9th Circuit analyzed Aalmuhammed’s claim for joint copyright ownership, noting that a “joint work” is one that has been prepared by “two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole” under Section 101 of the Copyright Act.

In interpreting the statute, the Court considered who constitutes an “author.” It said ”Who, in the absence of contract, can be considered an author of a movie? The word is traditionally used to mean the originator or the person who causes something to come into being . . . . For a movie, that might be the producer who raises the money [or] the editor [or, under the] “auteur” theory . . . it might be the director, at least if the director is able to impose his artistic judgments on the film.”

The Court observed that “Everyone from the producer and director to casting director, costumer, hairstylist and ‘best boy’ gets listed in the movie credits because all of their creative contributions really do matter. It is striking in Malcolm X how much the person who controlled the hue of the lighting contributed, yet no one would use the word ‘author’ to denote that individual’s relationship to the movie.”

Thus, the Court concluded, “A creative contribution does not suffice to establish authorship of the movie.”

Ultimately, the Aalmuhammed court ruled that while Aalmuhammed made “extremely helpful recommendations,” Spike Lee was not obligated to use them, and thus plaintiff lacked the control over the work that would suggest any co-authorship.

In addition, the Court said, even Spike Lee, the director, had performed his tasks as a “work for hire,” so no one could reasonably have intended that Aalmuhammed had greater rights to the copyright in the work than Spike Lee (who, as a result of his work for hire agreement with the studio, had none).

Finally, the Court made a significant policy point that may effect Garcia here.

It said “[t]he broader construction that Aalmuhammed proposes would extend joint authorship to many “overreaching contributors,” . . . and deny sole authors “exclusive authorship status simply because another person render[ed] some form of assistance.”[ Citations omitted.] Claim jumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were doing, if creative copyrightable contribution were all that authorship required.” 202 F. 3d at 1236.

Now in light of all this, you may be wondering why, if Garcia has any hope of prevailing, all actors and actresses don’t make a claim for the copyright in their performances.

Actors typically don’t bring this kind of lawsuit because they almost always enter into “work for hire agreements,” as Spike Lee did with respect to his directing services in Malcolm X, or otherwise release such claims before commencing work on a project. Apparently Garcia never executed any such release.

By the way, it’s important to note that Garcia states in her complaint that she also had no idea the film would become the “Innocence of Muslims.” She states she “responded to a casting call posted on Backstage for a film titled ‘Desert Warrior,’ which was represented to be an ‘historical Arabian Desert adventure film,” and that she would not have voluntarily preformed in a hateful production.

I hope she gets to see her grandkids sometime soon.

Jonathan Pink received his MFA from UCLA’s School of Film and Television (1988), and was an award winning screenwriter before becoming a nationally-recognized, intellectual property and business lawyer. He currently leads Bryan Cave LLP’s Internet and New Media Team, where his practice focuses on intellectual property and commercial litigation, including arts and entertainment related matters. He is resident in the firm’s Santa Monica and Irvine offices, and can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

“And I Think I Love You” . . . Or Not: Shirley Jones and The Right of Publicity

Shirley Jones, star of my childhood fav, “The Partridge Family,” has lost again.

Ms. Jones had sued the photo-licensing company, Corbis, for violating her right of publicity after Corbis displayed images of the long-ago-once-upon-a-time ingénue on its website.

As a refresher, the right of publicity has been defined as the inherent right of every human being to control the commercial use of his or her identity. It is a state-law created intellectual property right whose infringement is a commercial tort of unfair competition. The right of publicity is not merely a legal right of the “celebrity,” but is a right inherent to everyone to control the commercial use of identity and persona and recover in court damages and the commercial value of an unpermitted taking. J. THOMAS MCCARTHY, RIGHTS OF PUBLICITY AND PRIVACY § 1.3 (2011).

In Ms. Jones’ case, the trial court found that she had consented to having her photo taken (walking the red carpet), and thus reasoned that “No reasonable jury could find that defendant’s display for this purpose was not consensual.” The Court suggested opined that any contrary holding “would require that individual photographers themselves market their photos or obtain express consent from each subject prior to utilizing a third-party distributor to market their red carpet photos.”

Part of the problem with Ms. Jones’ case was that she did not dispute having consented to being photographed; she even acknowledged her understanding that the shutter flies would sell the pix they took.

In light of this, the Court reasoned that “Defendant merely maintains a modern-day version of the catalogs of sample images that would be hand-delivered to potential buyers in the past,” thus concluding that the photographs Corbis displayed on its site were used only to advertise a license to those very images.

Well isn’t that exactly what Cal. Civ. Code Section 3344 (our right of publicity statute) prohibits? It provides, in pertinent part, “[a]ny person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof.” CAL. CIV. CODE § 3344(a)

Perhaps this is why Jones appealed. Unfortunately for her, however, the Court of Appeals agreed with the district court. It ruled the district court had not erred in concluding that Corbis did not violate Ms. Jones’s right of publicity.

And I suppose this does make sense, if she consented to the photo-taking. Though the protection and cause of action vary from state to state, it’s generally accepted that a plaintiff must plead and prove, among other things, that a lack of consent. That is that the defendant, without permission, used some aspect of identity or persona (which is likely to cause damage to the commercial value of that persona). MCCARTHY, supra, § 3.2 (2011); see also, Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134. 1138 (9th Cir. 2006) (To sustain a claim for protection of voice, name, and likeness under California’s common law right of privacy, a plaintiff must prove: (1) the defendant’s use of the plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury).

And this is pretty much what the 9th Circuit concluded. It expressly noted that “For both California common law commercial misappropriation claims and claims under California Civil Code § 3344, the plaintiff must prove that the defendant appropriated his or her likeness without consent.” (Citing Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001 (9th Cir. 2001).) As the court pointed out, that consent “may be implicit and is to be determined objectively from the perspective of a reasonable person.” (Citing See Newton v. Thomason, 22 F.3d 1455, 1461 (9th Cir. 1994); Virgil v. Time, Inc., 527 F.2d 1122, 1127 (9th Cir. 1975); Restatement (Second) of Torts § 892 cmt. c (1979).)

So therein lies the rub: was it reasonable for Jones to expect her photos to show up on a site like Corbis, or wasn’t it? (And why is the song “And I Think Love You” running through my head right now? And how do I get it to stop?)

The Court of Appeals noted that the lower court had found Ms. Shirley admitted she intended for the photographs at issue to be distributed to media outlets, that she was not surprised the photographers would use a third party distributor, and that she had not placed limits on how the photographs of her could be distributed.

In light of this, the Court found that she had consented to Corbis’ placement of sample photographs of her on its website for the purpose of selling copyright licenses to those images.

Notably, Corbis attempted to argue that the Copyright Act preempted Jones’ claim. Section 303 of the Copyright Act preempts claims that equivalent to those addressed by copyright law. To this end, Corbis argued that Jones’ claims “would upend the copyright scheme carefully laid out in the Copyright Act by giving [Jones], as opposed to the copyright holders, the right to control the display and distribution of the copyrighted works, application of conflict preemption to bar plaintiff’s claims is appropriate.”

That’s a nice, creative argument. By to quote one of my favorite former partners (talking about you, Dave), “No dice!” The Court of Appeals summarily brushed aside that argument (as well it should have).

Finally, the Court ruled that the district court had not abused its discretion in awarding Corbis its attorneys fees. Ouch.

Now quick: other than Shirley Jones and David Cassidy, who else starred in The Partridge Family? (A: Dave Madden and Susan Dey. Bottom: Danny Bonaduce, Suzanne Crough, Brian Forster. And yes, I used Wikipedia for that one.)

Jonathan Pink is an intellectual property and entertainment attorney at Bryan Cave, LLP. He is a versatile trial lawyer specializing in commercial, copyright and other intellectual property disputes in the entertainment, media and fine art industries. He has successfully represented major musical artists, actors, performers, writers, producers and visual artists in contract, fraud, copyright, trademark, right of publicity, unfair competition actions in federal and state courts.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

More Yoga Poses — No Copyright Infringement

 

Back in February, I wrote about a copyright infringement lawsuit that had been asserted by the creator of Bikram Yoga, Bikram Choudury.

He brought the case against one of his former students on the basis that the student allegedly taught Bikram’s sequence of twenty-six postures without a copyright license to use Bikram’s work. Bikram claimed the sequence of 26 postures was tantamount to choreography, and thus entitled to protection under the Copyright Act.

The Copyright Office disagreed, saying that exercises, including yoga exercises, are not protected as choreography. Because the Copyright Office has extensive experience reviewing copyright claims and the authority to interpret the Copyright Act, courts tend to give deference to its decisions. See Batjac Productions Inc. v. GoodTimes Home Video Corp., 160 F.3d 1223, 1230 (9th Cir. 1998) (deferring to Copyright Office’s refusal of registration, stating “the Register has the authority to interpret the copyright laws and [ ] its interpretations are entitled to judicial deference if reasonable”) (citation omitted); Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 287 (3d Cir. 2004) (“the Copyright Office’s longstanding practice of denying registration to short phrases merits deference”).

The issue was subject to dispute on the basis that Section 102(a)(4) of the Copyright Act includes choreographic works as subject matter in which copyright protection subsists. See Martha Gram School and Dance Foundation, Inc. v. Martha Gram Center of Contemporary Dance, Inc., 380 F.3d 624, 632 and n. 13 (2d Cir. 2004) (choreographic work may be fixed by being filmed, videotaped or through use of a written system of notation); Horgan v. Macmillan, Inc., 789 F.2d 158, 160, n. 3 (2d Cir. 1986) (same).

Well, in case the Copyright Office failed to put this dispute to rest earlier in the year, it has conclusively done so now.

The Copyright Office announced last week on Friday that it had made a mistake when it issued registration certificates for yoga sequences as “compilation authorship” as a result of the “selections and arrangement of exercises.”

It’s well established that a sufficiently original compilation of unprotectable elements may be protected by copyright. See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (unique compilation of unprotectable musical elements held to be protected). The protection offered by the copyright in such a situation is not for the individual elements giving rise to the compilation, but rather to the selection or arrangement of elements, but only where that selection and/or arrangement is sufficiently original. See Feist Publications, Inc. v. Rural Telephone Service Company, Inc., 499 U.S. 340, 348 (1991); Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (“[A] combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes original work of authorship.”).

As to a protectable selection of elements, the more numerous and diverse the criteria used to make the selection, the greater the likelihood that the compilation will be deemed sufficiently original. See Matthew Bender & Co., Inc. v. West Publishing Co., 158 F.3d 674, 682 (2d Cir. 1998) (“creativity inheres in making non-obvious choices from among more than a few options”). The lower the percentage of material used from the universe of relevant elements, the greater the likelihood that the compilation will be deemed sufficiently original. See Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984); see also Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 915 (9th Cir. 2010) (expression of an attractive young, female fashion doll with exaggerated proportions in a doll sculpt is highly constrained because the factors can be exaggerated only so much before they become freakish).

For the arrangement of elements to be protected, there must be sufficient creativity in that arrangement. Again, the greater the number of categories or sections in which the information is arranged, the greater the likelihood that the compilation will be deemed sufficiently original. See Key Publications, Inc. v. Chinatown Today Publishing Enterprises, Inc., 945 F.2d 509 (2d Cir. 1991). The use of obvious, garden-variety, traditional or routine categories or sections in the arrangement of elements will not be sufficiently original for protection. See Feist Publications, supra; Matthew Bender & Co., Inc. v. West Publishing Co., 158 F.3d 674, 682 (2d Cir. 1998) (creativity is lacking where the selection is dictated by industry conventions or other external factors).

Of course, even where the selection and arrangement of elements satisfies the test of originality, the protection provided to a compilation by copyright is thin. See Feist, 499 U.S. at 349. This means that the lack of close copying and the inclusion of additional elements is generally sufficient to withstand a claim of that the plaintiff’s selection of elements has been infringed.

In making its announcement last week, the Copyright Office explained (in keeping with the case law identified above, e.g. that the mere combination of preexisting material does not render it – without more – copyrightable) that a yoga sequence is not entitled to copyright protection as a compilation (or as a work of choreographic authorship).

 

Jonathan Pink is an intellectual property, entertainment and new media attorney specializing in copyright, trademark litigation, and rights of publicity. He works extensively with clients in the entertainment and retail industries, and is resident in Los Angeles and Orange County, California. He can be reached at jonathan.pink@bryancave.com.

 

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

The Art of Ending an Act: An End to the California Resale Royalties Act

In 1973, after a work by Robert Rauschenberg sold at auction for $85,000, Rauschenberg blew a gasket.

Presumably, Rauschenberg wasn’t ticked off about the fact that his work was being sold at Sotheby’s or that it had pulled in quite big chunk of change. Rather, as the story goes, he was angry about the fact that the investor to whom he had sold the work for $900 had just profited by roughly $84,100, while Rob-the-Artist wasn’t making a dime off of that Sotheby’s sale.

So what did Rauschenberg do? He allegedly stormed across the auction floor, sought out the gleeful seller, and shoved the man, screaming he had not worked so hard “just for you to make that profit.”

In fact, enough artists actually felt this way that – in California at least – the legislature passed a law entitling artists to receive a royalty each time their works were resold (subject to certain limitations). That law, the California Resale Royalties Act (CRRA), recently came under fire.

Specifically, in Estate of Robert Graham v. Sotheby’s, Inc., (— F.Supp.2d —-, 2012 WL 1765445 (C.D.Cal.)), a slew of artists (or their heirs) sued world-renowned auction houses Sotheby’s and Christies for allegedly failing to pay artists the appropriate resale royalty rate under the CRRA. The auction houses responded by arguing that the CRRA violates the Commerce Clause of the United States Constitution. (U.S. Const. art. I, § 8, cl. 3.)

Now before anyone gets off on the fact that Sotheby’s isn’t the “seller,” you should know that the CRRA additionally requires the seller’s agent to effect payment of the resale royalty. Cal. Civ.Code § 986(a)(1). It provides that “[w]hen a work of fine art is sold at an auction or by a gallery, dealer, broker, museum or other person acting as the agent for the seller the agent shall withhold 5 percent of the amount of the sale, locate the artist and pay the artist.” Id.

By the way, if the agent is unable to locate the artist within 90 days, the CRRA dictates that the agent pay the royalty to the California Arts Council, which is then required to search for the artist for seven years, after which the funds pass to the California Arts Council for “use in acquiring fine art.” Id. Which, in turn, would require that the Arts Council pay a royalty to the creator of the work purchased.

Bottom line, however, Sotheby’s and Christies are “in for a penny, in for a pound” if the CRRA applies.

But does it?

The Court in Graham v. Sotheby’s first found that “where works of fine art are sold from one state into another, each piece of fine art itself constitutes a ‘thing’ in interstate commerce” which Congress may regulate under the Commerce Clause. 2012 WL 1765445 at *4, (citing United States v. Lopez, 514 U.S. 549, 558-59 (1995)).

It then went on to analyze whether the CRRA substantially affects interstate commerce, concluding that it does. Specifically, the Court said that “[o]ne factor that a Court should ‘consider when evaluating whether a law has a ‘substantial effect’ on interstate commerce [is] … whether the statute has anything to do with ‘commerce or any sort of economic enterprise, however broadly one might define those terms.’’” Id. (citing San Luis & Delta–Mendota Water Auth. v. Salazar, 638 F.3d 1163, 1174 (9th Cir. 2011).

In fact, the Court noted that the Ninth Circuit had previously described the CRRA as “an economic regulation to promote artistic endeavors generally.” 2012 WL 1765445 at *4, (citing Morseburg v. Baylon, 621 F.2d 972 (9th Cir. 1980)). Thus, the Court concluded that when the number of art sales that the CRRA purports to regulate (throughout the United States) are considered in the aggregate, “the CRRA has a ‘substantial effect’ on interstate commerce such that Congress could regulate the activity” and thus the dormant Commerce Clause applies to the CRRA. Id. (citing Citizens Bank v. Alafabco, Inc., 539 U.S. 52, 56–57 (2003)).

Given that the dormant Commerce Clause applies, the Court asked whether the CRRA violates that Clause. It found it does. Reasoning that the defendants, both New York corporations, were being accused of violating a California by virtue of selling art owned by a California seller notwithstanding the fact that the sale took place wholly in New York, the Court ruled that the CRRA has the “practical effect” of controlling commerce “occurring wholly outside the boundaries” of California and therefore violates the Commerce Clause of the United States Constitution. 2012 WL 1765445 at *6.

Once an act violates the Commerce Clause, it’s prognosis for survival is not great. Here, the Court concluded that although the CRRA contains a severability provision, it did not believe that the offending portions could be severed, thus ruling that “the entire statute must fall.” Id. (citing Cal Civ.Code § 986(e) which provides that “If any provision of this section or the application thereof to any person or circum-stance is held invalid for any reason, such invalidity shall not affect any other provisions or applications of this section which can be effected, without the invalid provision or application, and to this end the provisions of this section are severable.”)

Now I understand that many artists may mourn the demise of this Act, but I don’t. I’ve never thought it was fair. Hear me out.

First, I think the CRRA conflicts with the first sale doctrine codified by the Copyright Act. That doctrine provides that “Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” 17 U.S.C. 109. As applied, the first sale doctrine has come to mean that where one lawfully, and with the authorization of the copyright owner, comes to own a “copy” of a work, that person may likewise dispose of the work through sale to another without violating the Copyright Act.
So how then does the CRRA purport to create an on-going obligation to compensate the author of the work? While many artists described this as basic fairness, I disagree. It see it as a direct conflict with the notion as set forth in the first sale doctrine that once the work is lawfully sold or even transferred gratuitously, the copyright owner’s interest in the material object in which the copyrighted work is embodied is exhausted.

Secondly, the CRRA fundamentally ignores the reality of the art market. When an artist’s work increases in value (as measured through auction sales), the commercial value of his/her other works often see a similar financial up-tick. Take Rauschenberg for example. If his work hadn’t fetched $85K in 1978, it’s unlikely that it would have continued to climb in value. (One was recently offered at auction over $200,000.) So when an artist’s work start’s making big money for a collector, the artist him/herself also increase what they charge. Rauschenberg wasn’t charging $900 for his works by the time he died. Neither was Warhol. When prices go up at auction, they increase the value of the art and the artist. So do collectors potentially make out when they buy low and sell high? Sure, but the artists also benefit.

Also, and importantly, any increase in an artist’s value is seldom due only to the artist’s continuing endeavors. Rather it’s at least partially due to the dealers, collectors and critics who supported and bought his work while he was still unknown, overlooked and disregarded. In light of this, I’m wondering if artists want participate in the upside of future sales (even if they discount the ancillary contribution of collectors, dealers, etc.) do hey also feel that they should share in any subsequent loss in value?

In any event, I never saw the merit to the CRRA, and I’m glad to see it gone. Now, in the interest of full disclosure, my mom is a long time art dealer, but on the flip-side, I was a syndicated cartoonist before going to law school. In short, I take the position I do with all of my background.  And based on this, I think I’m being fair.

How about you?

Jonathan Pink is an intellectual property attorney and leads the Internet and New Media Team at Bryan Cave, LLP. He is located in Los Angeles and Orange County. He can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Goodbye, Mr. Bradbury. And thank you.

Was going to write about the Sotheby’s case that invalidated the California Resale Royalties Act as unconstitutional, but that can wait.

Today I mourn the passing of Ray Bradbury.

Andrea and I met him once, in Glendale, at a library book signing. He was jovial, gentle and sweet.

But that wasn’t the first time I had met him. I met him twice, actually.

The first time, was when I was about 13. A friend delivered newspapers to the building on Wilshire and Beverly where Bradbury had a office. I was an avid Sci-Fi fan, and wanted to be a writer.

I begged Rob to show me Bradbury’s office.

He took me up there and I knocked. Bradbury answered the door and invited us into to his cluttered, paper strewn two room office. I later wrote him a letter and he responded, saying “write everyday.”

Years later, when I met him with Andrea, I asked “Do you remember when two little boys knocked on your office door?” His response: “Of course I remember you.”

This week’s New Yorker has his aptly named piece by Mr. Bradbury. It’s entitled “Take Me Home”; here’s brief quote:

“Once the fire got going, the balloon whispered itself fat with the hot …air rising inside. But I could not let it go. It was so beautiful, with the light and shadows dancing inside. Only when Grandpa gave me a look, and a gentle nod of his head, did I at last let the balloon drift free, up past the proch, illuminating the faces of my family. It floated up above the apple trees, over the beginning-to-sleep town, and across the night among the stars.”

Goodbye, Mr. Bradbury. And thank you.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.