I've never actually explained the Work For Hire doctrine in any meaningful way. I've only tiptoed around it, and that's just ridiculous when you consider the fact that artists generally aren't independently wealthy and need to work for a living. Since most artists make their living by creating their work on someone else's dime, that means they're relying on the Work For Hire doctrine even when they don't realize it.
Read MoreKatherine Heigl has never been a lovable celebrity. Throughout her career, she's bad-mouthed her projects and coworkers to such a degree that Hollywood and the public have largely turned on her. Some have even dubbed her "Hollywood's Most Hated Actress." Lately, it appears she's taken a page out of Sheryl Sandberg's playbook and is leaning in to that title; last week she sued NY-based drugstore chain Duane Reade for $6 million after they tweeted a picture of her leaving one of their stores after shopping there. If she wins, she plans to donate that money to charity... her own charity.
To be sure, this lawsuit isn't going to win her any fans. But then it's not really designed to; it's designed to protect her publicity rights. And using that as a guidepost, Ms. Heigl may actually have a point. Here's the tweet in question:
Heigl's complaint alleges violations of the Lanham Act (the law governing trademarks) as well as New York Civil Rights Laws Sections 50 and 51 (which govern privacy). I'm not going to address the trademark issue here because she would have to prove that Duane Reade's use of her picture would likely confuse the public into assuming she was affiliated with Duane Reade. I just don't think the facts are compelling enough to make that claim (the average person will not conflate shopping at a store with endorsement of it). As I see it, this case is more likely to turn on the privacy issue anyhow.
Section 50 of the NY Civil Statutes says that:
A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.
That kind of says it all, doesn't it? The image of a person (famous or not) cannot be used in advertising without their consent - which Ms. Heigl obviously did not give. In common law, this would be referred to as "appropriation of likeness" which is considered one of four privacy rights. So does the tweet count as advertising? Based on the nature of the tweet and the wording, I think a convincing argument can be made. After all, why would Duane Reade tweet that picture if there wasn't a business motive behind it? It's not like the picture was taken by an awe-struck fan... the picture was taken by a paparazzo which was then used by a corporation whose message on Twitter and Facebook was clearly that "Ms. Heigl is a patron of our stores."
Even still, this infraction seems relatively harmless... certainly not worthy of $6 million of Heigl's wrath. And it does raise some questions about the nature of publicity rights as used by celebrities. On the one hand, social media has made it difficult for people to know where the line is between advertising and simply pointing out "here's a celebrity!" While I think the tweet counts as advertising, I could be convinced otherwise with some clever lawyering. There are also First Amendment questions at stake - can a corporation never tweet a picture of a famous patron? Is such a tweet automatically advertising by its nature? And would banning those types of tweets violate the right to free speech? On the other hand, celebrities rely on their images to get work, and having that image appropriated for a use they never approved could result in a loss of work or even ruin business relationships (e.g. what if Ms. Heigl just worked out a deal to be a spokesperson for CVS? The tweet of her shopping at a competing drugstore could destroy that deal).
I know, I know. It's hard to care about how Duane Reade's tweet may negatively impact Ms. Heigl. That's the level of damage she's done to her personal brand. And this lawsuit, however justified, doesn't do anything to help her image. For her sake, I hope she realizes that legal protection of a brand is not the same thing as public protection. The former is fine, but if she wants to continue acting, it will be crucial for her to work on the latter.
A few people have asked my opinion on the Quentin Tarantino v. Gawker lawsuit and while I've been happy to lament it with friends and family, I hesitated to weigh in here because I wanted some time to get my thoughts in order. The situation, while comical, says something deeply unflattering about both Tarantino and Gawker, and it brings to light a previously unknown area of law that could have an impact that reverberates through the entertainment and media spheres for a long time. That time to think was also necessary to separate the wheat from the chaff - people have largely chosen sides based on knee-jerk reaction, rather than a thoughtful analysis of the facts (if you like Tarantino's films, Gawker is obviously the devil. If you dislike Tarantino's films, then he's a cry baby who may have instigated this whole fight). Now that I've had some time to process the situation, here's my take:
Whoever wins, we all lose.
For those not in the know, Tarantino sent an early draft of his new script, The Hateful Eight, to several actors he was considering for roles in the film. One of those actors (most likely Bruce Dern of Nebraska fame) gave the script to his agent. Somehow, the script leaked out of the agency and wound up on a website where it could be downloaded and shared by anyone. Angered by the leak, Tarantino spoke to Deadline to discuss how he was so pissed at the situation, he shelved the script completely and would make another film instead. A few days later, Gawker printed a story with the headline Here is the Leaked Quentin Tarantino Hateful Eight Script which contained a link to anonfiles, the website that was hosting the leaked script. Tarantino lost his shit and sued Gawker, claiming that it was liable for "contributory copyright infringement." You can find the complaint here, and you can read Gawker's response to the suit here.
Unlike traditional copyright infringement, contributory copyright infringement is a really muddy area of law, with very little case-law and precedent to accurately predict how a court would rule on this issue. Contributory infringement occurs when someone knowingly causes, induces, or materially contributes to copyright infringement. In this case, Gawker didn't host the script on its own servers, so it can't be liable for direct infringement. But because it linked to anonfiles and essentially told its audience, "here's where you can get it," Tarantino argues that it knowingly caused the infringement to be much worse than it otherwise would have been.
So did Gawker infringe Tarantino's script through contribution? That determination will rest on a lot of factors such as: the intent of the article's author and publisher, the likelihood of readers clicking through to the script, and the actual amount of traffic Gawker is responsible for sending to anonfiles. I honestly don't know how this will shake out, but here's what I do know... whichever way a court rules in this case, it sets a dangerous precedent for artists and web masters alike.
If Tarantino loses, it softens the rights of individual artists to protect their work from prying eyes. It allows websites to purposely drive traffic towards wrongfully obtained work without taking any of the blame for making the infringement worse. On the flip side, if Gawker loses, website owners will become responsible for content they don't host. No matter how you cut it, it creates a slippery slope that could negatively impact a lot of people, especially when you consider the fact that Tarantino filed his complaint in a California Federal District Court. Like New York, the California federal courts are extremely influential, and case-law coming out of those courts can set the agenda for the rest of the country.
To make matters worse, neither Tarantino nor Gawker have particularly good arguments. In the past, Tarantino has openly praised the leaking of his scripts, and his bluster is what made this story news to begin with (if he had handled it privately or through his lawyers, the script might never have leaked as quickly and as widely as it did). Gawker argues that because it's a news website, posting the link was newsworthy and thus, its actions are protected by fair use. But would a real news agency like CNN or BBC post the link? I doubt it. I also doubt that posting a link to an infringed script was the kind of thing the writers of our copyright laws envisioned when they came up with fair use.
I pray that the parties settle before getting to trial because this is not the case to determine such a deeply important issue.
This past April, a former military police officer named Robert Galbraith released his debut novel, The Cuckoo's Calling to stellar reviews but terrible sales, selling only 1500 copies. As sales floundered, a British lawyer named Chris Gossage confided to his friend Judith Callegari that Galbraith wasn't a real person, but was in fact the pseudonym for J.K. Rowling, the most famous author in the world. Callegari then did what most of us would do when handed such a world-shattering piece of gossip - she blabbed to anyone who would listen, including a reporter. With the cat out of the bag, sales of Cuckoo skyrocketed to #1 on Amazon.
It's not hard to see why Rowling would do this. As wealthy and successful as Harry Potter made her, the pressure to rebel against typecasting must have been overwhelming. Following the release of Deathly Hallows in 2007, she sought to distance herself from the world of magic by writing a novel for an adult audience. The result was The Casual Vacancy, a thriller which sold like gangbusters, but was panned by critics. I imagine she took a great deal of satisfaction knowing that while Cuckoo wasn't popular when everyone thought Galbraith had written it (it's not like she needed the money), it found love from the very people who felt she could never write a book that wasn't aimed at children. She admitted as much on her website, saying that it was nice to be able to publish "without hype or expectation." So while Rowling was displeased with her identity being leaked, she had still proven her point.
Not everything worked out so well for Gossage though, a partner at the firm that represented Rowling. She sued the firm because he breached the inherent confidence present in the attorney-client relationship (which usually applies to the whole firm even if Gossage himself wasn't representing Rowling). Even worse, he was just slapped with a fine by the Solicitor's Regulation Authority (the organization that oversees attorney ethics in England) for violating a client's trust.
Regardless of which side of the pond you live on, attorney client confidentiality is a pretty big deal. In most cases, by the time a client seeks the aid of a lawyer, a crisis has happened and the client is often in the midst of a deep personal anxiety. Not only are they emotionally fragile, they are dealing with issues that might require the divulging of sensitive information. Anything from sexual abuse, to financial indebtiture, to murder is on the table, and needs to be discussed frankly in an open and safe environment. If the client can't feel comfortable discussing these issues, then the lawyer can't give the best legal counsel he or she has sworn to provide.
That trust is so important that every country with a judicial system has a rule protecting attorney-client confidentiality. In Massachusetts, where I practice, Rule 1.6 of the Rules of Professional Conduct states that:
A lawyer shall not reveal confidential information relating to representation of a client unless the client consents after consultation.
Without the client's express consent, a lawyer can only reveal confidential information in certain limited circumstances:
All 50 states have a rule like this. Depending on the severity of the violation, a lawyer can be punished with fines (as Gossage was), disbarment, or even jail time. Most lawyers take client confidentiality very seriously, not just out of fear of punishment by the local examining board, but because it's the right thing to do.
Every American law student knows the tale of Frank Armani and Francis Belge, two American lawyers who represented Robert Garrow, who was accused of murdering Philip Domblewski in 1973 while Domblewski was camping in the Adirondacks with friends. During a consultation with Armani and Belge, Garrow not only admitted to killing Domblewski, he admitted to murdering and raping several other people. Garrow told them where he dumped the bodies, and his story was confirmed when Armani and Belge personally went to those sites to investigate and photograph the remains.
But because Garrow was their client, Armani and Belge couldn't tell the family members of the deceased where the bodies were. In fact, Armani and Belge kept silent for nearly a year, despite intense public pressure (they finally disclosed what Garrow had told them after Garrow admitted to the murders during trial). Because they had taken an oath to protect their clients' confidences (no matter how reprehensible), Armani and Belge were not able to discuss what Garrow told them without incurring potential legal repercussions.
In the grand scheme of things, the £1000 (about $1600) Gossage was fined amounts to little more than a slap on the wrist. Gossage claims that he himself is a victim of betrayed confidence, believing that Callegari would keep the secret. Regardless of his excuses, Gossage just learned a valuable lesson about talking out of school, especially when the client is as well-known as Rowling. He should count his lucky stars that she's a world-famous billionaire author, and not a psychotic rapist killer like Garrow.
I've always wanted to write a salacious hit-bait headline like that. Hopefully it worked and you're reading this. So now that I've gotten your attention, here's what I really want to say... anyone who argues against net neutrality is a greedy scumbag who wants to take your money.
This week, the D.C. Circuit Court of Appeals struck down the Federal Communication Commission’s (FCC) rule protecting net neutrality. And that’s unfortunate because net neutrality is a wonderful thing. For those who don’t know, net neutrality is the principle that all internet traffic should receive free and equal service, regardless of source or content. For the past decade, this is how the internet has functioned. It didn't matter if you were reading an article on a news website, sharing your vacation pics on Picasa, or streaming Raging Bull on Netflix, you could access any content you wanted and it was all treated the same.
Net neutrality is what allowed Google, Facebook, Netflix, and Amazon to get a foothold in the marketplace and become the juggernauts they are today. Realizing the goldmine to be had by controlling access to the internet, the telecoms started implementing policies to do just that. So in 2010, the FCC passed an Open Internet Order allowing it to regulate internet companies the same way it regulates telecoms and cable companies. The goal was to keep access to the ENTIRE internet equal and open to all.
Why Should You Care?
Unfortunately, Verizon hated this, so it sued the FCC, claiming that its Open Internet Order was an overreach of federal power. The D.C. court agreed. That means it’s now legal for internet providers to:
So if Time Warner wanted, it could now block any website it's not affiliated with. Prefer to get your news from NBC, Fox, or NPR? Too bad. Time Warner owns CNN so that’s the only news outlet you might be able to get. Even if it decides not to block those websites outright, it can charge ISPs higher fees to carry those websites, or throttle the bandwidth given to those websites making them load much slower. HuffingtonPost has a pretty solid rundown about how the internet might look in the absence of net neutrality.
Ultimately, the death of net neutrality will mean that a few giant companies can discriminate against sites and content they don't like and funnel your internet experience in ways they deem appropriate (during oral arguments, Verizon’s attorney admitted they would be pursuing different economic schemes if not for the Open Internet Order). With the internet providers controlling content, fewer and fewer startups will be able to get a foothold in the market, significantly affecting innovation.
Net neutrality opponents have argued that so much traffic comes from "big video sites such as Netflix and YouTube, [that it] clogs up the system and imposes delays on everyone else. These companies should be paying their fair share." Which sounds eminently reasonable until you realize that Verizon made $2.23 billion in the third quarter of 2013 alone, so it's not exactly hurting for cash.
Pro-neutrality advocates have argued that there's plenty of bandwidth to go around and charging extra because of the nature of the content is "naked corporate greed." I agree, and so do Facebook, Google, Yahoo, Amazon, and Netflix, who favor net neutrality and stand to lose a lot of money if the telecoms get their wish.
How This Affects Artists
The loss of net neutrality is bad for everyone, but it’s especially bad for artists because art is frequently visual in nature, and unlike text, visual media requires a lot of bandwidth. If I’m a filmmaker and I put my latest film on YouTube, how likely are you to watch if it takes 10 minutes to load because you’re on a lower-tiered broadband plan which doesn’t include video streaming? If I write a song that contains explicit sexual content, how will I get anyone to listen if Comcast starts arbitrarily banning content it deems to be pornographic in nature?
The end of net neutrality becomes another way for large corporations to trample the rights of individual artists, something I’ve railed about on this site for a while now. Limiting the artist’s ability to display and promote his or her work not only affects the individual’s ability to make a living, but it affects society at large because it stifles creativity and limits innovation.
Why There’s Still Hope
The Atlantic's Kevin Werbach offers some credible arguments that, despite the ruling, there’s some hope for the future. First, even though the D.C. court’s ruling now eliminate the only rule preserving net neutrality, no rules even existed before 2010. And it’s not like we were plunged into an internet-restricted hellscape during that time. In fact, immediately following the court’s ruling, Verizon announced that there would be no changes to its services for customers.
Second, the court made it’s decision on a fairly limited technicality and gave the FCC a roadmap for fixing this whole mess. In a nutshell, if the FCC placed internet services into the same category as it did the telecom giants, it would be able to reinstate the Open Internet Order in some form. The fact that internet providers are not classified as "common carriers" like the telecoms is the main reason the rule was invalidated by the court. And throughout the opinion, the court repeatedly references the FCC’s “choice” or “decision” to classify internet providers differently than telecoms.
Given the Commission’s still-binding decision to classify broadband providers not as providers of “telecommunications services” but instead as providers of “information services,” see supra at 9–10, such treatment would run afoul of section 153(51): “A telecommunications carrier shall be treated as a common carrier under this [Act] only to the extent that it is engaged in providing telecommunications services.”
Granted, reclassifying broadband providers as common carriers would require some legal jiu-jitsu by the FCC, and it’s unclear to me that the law would easily permit FCC Chairman Tom Wheeler to make that choice. Even if he could, he might not want to since it would probably result in a political battle with congressional Republicans, who, it should be noted, absolutely hate net neutrality. Right now, the FCC is more likely to appeal the court’s ruling than reclassify. But reading the decision it became clear to me that the court was telling the FCC how to regain the upper hand. The decision repeatedly slaps down Verizon's claims and states explicitly that it “think[s] it quite reasonable to believe that Congress contemplated that the Commission would regulate [broadband internet service providers].”
Probably the best way to resolve the matter is to get Congress to pass pro-net neutrality legislation, which is obviously easier said than done. Luckily, there’s a lot of money in this fight and for once, it’s not a case of the big guys (i.e. big corporations) lobbying against the little guys (i.e. you). Sure, Verizon, Comcast, and Time Warner have a lot of money to lobby Congress. But you know who else has a lot of money to lobby Congress? Facebook. Google. Amazon. Yahoo. And they fucking love net neutrality.
[Parks & Recreation is the best comedy on TV these days, so in honor of its new season, I've taken a look at one story issue that's been bugging me since last season's finale. Enjoy!]
Tortious interference occurs when a person intentionally damages the business relationships of another. Parks & Recreation occurs at 8:00pm, Thursday nights on NBC. The former is a type of civil liability imposed on one party who financially harms another party. The latter is an exceptionally sweet and intelligent sitcom that none of you are watching. What do the two have in common? A lot, surprisingly.
Last season, Tom Haverford - played by Aziz Ansari as a pop-culture obsessed, clothes horse, mogul wannabe - started a business called Rent-a-Swag, a store where the "teens, tweens, and in-betweens" of Pawnee, Indiana could rent "the dopest shirts, the swankiest jackets, the slickest cardigans, the flashiest fedoras, the hottest ties, the snazziest canes and more!" Per the store's fake website, "before you waste your money on something that won't fit in a month, or fight with your parents over that sick velvet blazer they won't buy for you - step into Rent-A-Swag." It's a good idea, right?
Anyway, the business took off and Tom was thisclose to leaving his job at the Parks and Recreation Department. Unfortunately, Tom discovered that a competitor opened a rival store directly across the street called Tommy's Closet. The competitor (whose identity I won't reveal here) informed Tom that Tommy's Closet was designed specifically to drive Rent-a-Swag out of business.
I don't know how the Parks & Recreation writers intend to resolve the situation (it will likely be sweet and goofy), but if I was Tom's attorney, I would advise him to sue the pants off (hehe) the owner of Tommy's Closet. In tort law, there's something called tortious interference with an expected economic advantage and it gives business owners a way to stop those who maliciously attempt to drive expected consumers away from their business. To win, Tom would have to prove that:
It wouldn't be very entertaining to watch, but Tom would most assuredly win a lawsuit against his competitor. First, Tom had a good reason to expect an economic benefit; he was already receiving it! His business was booming during the tail end of Season 5. Tom was even able to hire employees and pay dividends to his stockholders. Second, the competitor told Tom (in front of other people, I might add... witnesses!) that he was aware of Rent-a-Swag's financial success. In fact, during the Season 5 finale, he tried to buy Rent-a-Swag from Tom because it had become a known moneymaker. Third, the competitor admitted his desire to drive Tom out of business out of a misplaced sense of revenge and was actively luring customers away with free pizza and prizes. Finally, we see in the Season 6 opener that Tommy's Closet had succeeded in drawing customers away from Rent-a-Swag; the episode shows Tom alone in his store, all the customers having fled across the street. Tom has clearly suffered an economic damage.
While these kinds of malicious actions are rare, they do happen. Therefore it's important for all artists and small business owners to be aware that there are options available to them should they become victims of tortious interference. As a rule, the law doesn't look kindly upon those who open a business solely to spite another business. In the real world, Tom has options - and so do you. Of course, this is TV and I'm sure that whatever the Parks & Recreation writers come up with, it will be a hell of a lot funnier than watching this play out in a courtroom.
[You can also make a credible argument that Tom has a trade dress claim - a form of trademark infringement that protects a store's interior design - against the competitor since we learn that the interior of Tommy's Closet looks exactly like the interior of Rent-a-Swag.]
This Wednesday is the 50th anniversary of Martin Luther King's "I Have A Dream" speech. If you're like me, then you've probably seen snippets of that speech a hundred times, but never seen the full unedited version. That's because the speech is protected under copyright law until 2038, and anyone who copies, distributes, shares, or posts a video of the speech online will be violating copyright law and will legally owe restitution to the video's owner... Sony.* [Like when Sony ordered advocacy group Fight For The Future to remove the video from its website.]
Am I the only who thinks this is terrible? What kind of policy allows a major corporation to sue someone who wants to share with others THE ICONIC CIVIL RIGHTS MOMENT OF OUR TIME? Who is this policy protecting?
You may have noticed that I'm pretty vocal when I think changes should be made to U.S. policy, specifically copyright law. As a result, I've been accused several times of pursuing a "throw out the baby with the bathwater" agenda. But that's not really accurate since I've never called for scrapping laws wholesale. I have, on the other hand, advocated for revising laws that don't work as intended. I personally see advocating for better and smarter laws as my duty, not just as a lawyer, but as an American citizen (which, not so ironically, was kind of the point of Dr. King's speech).
And what's wrong with supporting change anyway? Not to be overly dramatic here, but America was founded on this whole idea of "it's not working out, so let's do something better." We went to war with England because we didn't like the way they governed us. We constructed a republican system of government that permits us to remove and replace politicians we don't like. We gave Congress the power to revise, update, and repeal laws because we recognized that people are imperfect and they will pass imperfect laws. When a law doesn't achieve its goal, it should absolutely be amended. The U.S. Copyright Act alone has been amended at least 10 times since 1790.
I keep saying it, but it bears repeating: copyright law wasn't created solely for the purpose of rewarding the artist. It was also designed to foster originality and ingenuity for the betterment of society (the founding fathers didn't measure capitalist success purely through personal wealth. Community prosperity was also a driving factor) and to shield artists from theft. It wasn't intended to be used as a weapon to attack others. Which is why the problem isn't that Sony owns the copyright to Dr. King's speech; the problem is what it can do to harm individuals who wish to share it. Simply put, Sony has the muscle and will to litigate against anyone who posts the video, regardless of the intent of the individual or their ability to fight back. And I don't think that's right.
In that spirit, here are two ideas that I think will be effective in revamping copyright law to better serve the American people.
Change is in our national DNA. History has borne that out repeatedly, so why fight it? Dr. King believed that. Who are we to assume differently?
*****
* Dr. King himself owned the copyright and even sued to prevent unlawful reproductions of the speech so that he could distribute profits from it to civil rights causes. After his death, the copyright passed to his family, who sold the copyright to EMI in 2009. EMI was purchased by Sony in 2011.
John F. Kennedy once said that "victory has a thousand fathers, but defeat is an orphan." This is never more true than in the entertainment world, which is why Robin Thicke, Pharrell Williams, and T.I. (aka Clifford Harris Jr.) have decided to sue Marvin Gaye's family and Bridgeport Music in order to deny their parental rights to Blurred Lines.
The Gaye family claims that Blurred Lines ripped off Marvin Gaye's Got To Give It Up, and they're demanding a substantial monetary payout. If they don't get it, they'll sue for copyright infringement. In response to the threat of legal action, Thicke preemptively sued them and is seeking a declaration from the court that Blurred Lines doesn't infringe Got To Give It Up.
Before we go any further, listen to both songs and compare for yourself.
Here's the SFW version of Blurred Lines:
[youtube=http://www.youtube.com/watch?v=yyDUC1LUXSU&w=560&h=315]
And here's Got To Give It Up:
[youtube=http://www.youtube.com/watch?v=fp7Q1OAzITM&w=420&h=315]
The lawsuit also contains allegations by Bridgeport Music that Blurred Lines plagiarized Funkadelic's Sexy Ways:
[youtube=http://www.youtube.com/watch?v=JxKOQ3SfGhg&w=560&h=315]
Now I consider myself something of a musical ignoramus, but even I can tell when one thing sounds like another thing. While there are some similarities between the songs, primarily because of the up-tempo beat, I think it's pretty clear that Blurred Lines is a wholly separate entity. Which means no infringement took place because copyright law doesn't protect individual elements of a work when those elements are commonly used in an industry or genre (known in the legal biz as "scènes à faire"). So in the hip-hop/R&B world, where uptempo bass-heavy beats are the norm, that similarity by itself would not be enough to constitute copyright infringement. There would have to be greater similarities between the songs in the lyrics and melody for a court to find some form of plagiarism.
So, if Thicke isn't in danger of losing an infringement case, then why did he sue the Gaye family in such an aggressive fashion, especially after stating in his complaint that he has the "utmost respect for and admiration of Marvin Gaye, Funkadelic and their musical legacies"? Certainly Thicke and his partners aren't content to share the glory with 997 other fathers. Blurred Lines is THE most talked about song of the summer. It's a legitimate phenomenon. Why should they share the substantial revenues they'll accrue with another artist? Even if that artist inspired them to begin with?
But I actually think this lawsuit is less about money than about sending a message. See, Blurred Lines is a real winner, and if Thicke can be bullied into settling out of court for several hundred thousand dollars in order to avoid a long and costly trial... well that's a pretty easy way to make a few bucks. Sadly, this type of thing isn't uncommon in the entertainment world. In fact, it's downright mundane.
"Your hit song/TV show/movie has something vaguely in common with my lesser known song/TV show/movie and if you don't pay me, I'll tie you up in litigation for years."
It's a very common tale. My guess is that Thicke decided to take the fight to the Gaye family to show that he can't be bullied. Will this type of preemptive lawsuit work or will a judge dismiss it and basically tell Thicke to wait until he gets sued? I have no reason to believe it won't have the desired effect. If it does, I think you'll see a lot more of these preemptive lawsuits. If it doesn't, the moral of the story will remain the same: you can't be a hit without people bleeding you for everything you're worth.
[Yesterday I got an email from a reader telling me a pretty scary story. She's permitted me to share it, but for the sake of confidentiality I'll change her name to "Jean".]
Five years ago, Jean was hired to design an ad for a local business. As part of the design process, she incorporated a stock photo from Getty Images, an online stock photo library. Jean's client liked the work and paid Getty a licensing fee to use that photo in the ad. The terms of the licensing agreement stated that the image could be used in print ads only. Jean put the ad on her personal portfolio website.
Last July, Getty's netbots discovered the ad w/image on Jean's website. Because the terms of the licensing did not include website use, Getty sent her a letter accusing her of breaching the license agreement and demanding $8,000 in usage fees. The netbots also found two images that she had used in mock-ups for other clients, but those mock-ups were never approved by the clients and the images never licensed.
Faced with a pretty scary situation, Jean did what a lot of people would do: she took down the images. This seems to have placated Getty because no more demand letters were sent. But did she really have to take them down?
Well, there are two issues determining whether Jean should fear Getty's wrath. 1) Did Jean's use of the image constitute copyright infringement? 2) Did Jean's use of the image constitute a breach of contract?
Regarding Copyright Infringement
Most IP lawyers agree that displaying your work in a portfolio, even when the copyright is owned by someone else, is permitted under fair use. That's because portfolios are non-commercial in nature, and don't generally compete with the copyright owner's financial interest. Jean's case is slightly different because the artist and the client aren't the only parties involved. There's a third-party copyright owner (Getty) who is laying claim to the image.
But even with that wrinkle, Jean is okay leaving the ad featuring the licensed image on her site. It doesn't conflict with Getty's market and she's not profiting from its display. She's using it as an example of her prior design work. No copyright infringement here.
Regarding the unlicensed images, I think removing them was the right decision. On the face of it, fair use applies to these images just as they would to the licensed image. But fair use is a squishy doctrine and in the absence of a license agreement, a judge could look at Jean's website and reasonably believe that she's not an innocent infringer (using images without permission from a website whose sole business is to license those images could indicate intent to pirate).
Regarding Breach of Contract
According to Jean, Getty placed very specific conditions on the use of the licensed image - print ads only, no web. Any violation of those terms constitutes a breach of contract, which is why Getty sent her an $8,000 bill.
Getty is fiercely protective of its copyrights. Their licensing agreements regulate every possible use of their images: the size of the image, number of times the image can be used, what mediums the image can be used in, and even placement of the image in the final artwork. When I was a producer, I would license stock photos from Getty all the time and they negotiate like Iranian hardliners. One time, I was trying to get their permission to use a single stock photo for a fifteen-year term in a documentary. No matter how hard I pleaded, I couldn't get them to budge from a ten-year commitment.
That said, standard agreements like these don't usually make third-parties liable for breaches of contract. Meaning that since the agreement was between Getty and the client, the terms of the contract likely didn't apply to Jean. Therefore, Jean is not liable for breach of contract.
So What Can Jean (And You) Do?
Realistically, Jean had no legal liability for displaying her work on her website. But to prove this, sadly, Jean would have to risk being sued by Getty. And as I've discussed before, going to court and winning, especially on a fair use case, is still a loss because of the time, money, and effort she would have to invest in defending herself. So the trick is to minimize liability before Getty can even send you a letter.
So, for all you designers who use stock photos in your work to stay (legally) safe, here are a few things you should always do:
Remember, as an artist, your portfolio is the face of your business. The less work you can show, the less successful your business is. But because Getty's first instinct is to throw lawyers at you, each of you has to determine for yourself whether fighting back is a viable option. Following these three tips will help minimize that possibility.
[Author's Note: I'd be interested to hear from other lawyers out there if you've had different experiences working with Getty. Ditto for artists. Hit me back in the comments section below.]
"The court has viewed Woody Allen’s movie, 'Midnight in Paris,' read the book, 'Requiem for a Nun,' and is thankful that the parties did not ask the court to compare 'The Sound and The Fury' with 'Sharknado.'" - District Court Judge Michael P. Mills
*****
Last October, William Faulkner's estate sued Sony Pictures Classics, the distributor of the hit Woody Allen film Midnight in Paris, claiming that a line used by Owen Wilson's character in the film was pulled straight from Faulkner's 1950 novel Requiem for a Nun without permission from the estate. Such a use, the estate argued, constituted both copyright and trademark infringement.
Just for comparison's sake, here's the line from the book: "The past is never dead. It's not even past."
And here's the line from the film, said by Owen Wilson's character Gil Pender: "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."
When I heard about the lawsuit, I rolled my eyes. "This is exactly the kind of frivolous lawsuit that makes people hate lawyers," I groused to my wife. The line was so minimal and seemed like a clear-cut case of fair use. The suit didn't seem like a credible attempt to protect Faulkner's legacy; it looked like a cynical ploy designed to cash in on a box-office hit. Judge Mills, as evidenced by the above quote, agreed. In an opinion issued yesterday, he dismissed the Faulkner case against Sony, finding that film's use of the Faulkner quote fell within the fair use exception to copyright infringement.
But the content of the opinion interests me less than what this case means to copyright policy. Because whether Judge Mills intended it or not, the dismissal speaks volumes about a problem with the way this country shields copyright holders from piracy. Namely, that copyrights are allowed to live for too long and that results in too many lawsuits.
Back in April, I wrote this Sherlock Holmes piece discussing why the current scheme of copyright duration should be changed to better serve the current copyright landscape. Right now, any work of art fixed in a tangible medium is protected by U.S. Copyright Law for the life of the author plus 70 years. I argued that allowing copyrights to last for so long actually stifles creativity and innovation in the following ways:
And that's exactly what happened here. Under our current copyright law, Requiem for a Nun is still protected 62 years after publishing and 50 years after the death of the novel's author. It will continue to be protected until 2032. This permits the descendants of the author to pursue all uses of that work anytime they see green and to concoct unreasonable arguments in defense of that green (the Faulkner estate, as part of its now dismissed trademark claim, argued that the use of William Faulkner's name in the film is likely to deceive the audience into believing that an affiliation exists between Faulkner and Sony). And while the verdict in this case was proper, it won't be the last time this happens.
A shorter copyright duration is better because it allows the author and his immediate family to profit from his creation, but it also devalues the property after the author's death by coming into the public domain sooner. And that's a good thing. If Faulkner is no longer profitable, then that frees up people to use his characters in new and interesting ways, while also incentivizing the estate to create something new. Someone argued with me once, claiming that letting the work into the public domain would open it to bastardization, copying, and retread. But I fail to see how that's a bad thing. If a filmmaker wants to stage a remake of Sherlock Holmes starring Justin Bieber as Sherlock and Chester Cheetah as Watson, well sure that will probably suck big time, but that doesn't diminish Conan Doyle's original writings. Those remain untouched and intact. And anyway, the integrity and profitability of a work are not often related. If they were, the Broccolis would never have greenlit a James Bond movie where Denise Richards played a nuclear scientist.
The purpose of copyright protection isn't to provide a golden parachute for the author and his beneficiaries until the end of time. It's mean to foster originality and ingenuity for the betterment of society. Hell, even the head of the Copyright Office, Maria Pallante, suggests shortening the duration of copyright to life of the author plus 50 years.
The point is, until we revamp our copyright law to stop favoring the corporate copyright holders, we're going to continue seeing lawsuits like Faulkner v. Sony any time a large copyright owner sees a potential conflict with its interest. When I look at Judge Mills' decision, I don't see a single judge smacking a plaintiff for filing a frivolous lawsuit. I see an indictment of a system that allows the suit to be brought in the first place.
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