Friday, 18 August 2017

Tattoo Copyright Infringement Suit Dribbles On


Readers of this blog may remember that Solid Oaks Sketches filed a copyright infringement suit against Take-2 Software, the maker of the NBA 2K video game, claiming that its reproduction of several tattoos worn by famous basketball players was copyright infringement. The case is still ongoing in the Southern District of New York, and defendants filed this month a motion for judgment on the pleadings, where they argue that the use was fair use. HT to the Hollywood Reporter.

Solid Oaks bought the copyright for the tattoos of Eric Bledsoe, Lebron James, and Kenyon Martin, which were created by several tattoo artists. These players appear in the NBA 2K game, complete with their tattoos. Solid Oaks claims this is copyright infringement. Take-2 argues that the use is de minimis and fair use.
A real-life depiction

The tattoos “only appear on the players on which they were inked in real life, not other real-world players or fictional characters” (p. 13). Indeed, the NBA 2K game, which is updated every year, depicts over 400 current and retired NBA players “realistically. …These depictions have realistic facial and physical features… They wear jerseys and sportswear with the numbers, colors and logos of their teams. The game even depicts NBA-branded socks” (p.9).

The tattoos at stake were each created specifically for the players. As explained in the motion, “[e]ach tattoo was created as a custom tattoo intended only for the player on which it was inked… Thus, they are imbued with special meaning for the players. For instance, Solid Oak admits that “Child Portrait Tattoo Artwork” depicts LeBron James’s son… Similarly, “330 and Flames Tattoo Artwork” depicts the number 330, which is the area code for Mr. James’s hometown” (p. 12).

Defendant argues that Plaintiffs “seek to hinder the ability to depict people as they appear in real life” (p.6), and that Plaintiff is contending that these famous basketball players must now seek its permission each time they appear in public, in films, or when being photographed.

Use is de minimis

Defendant is arguing that the use of the protected work is de minimis. “[T}rivial copying does not constitute actionable infringement” Newton v. Diamond, 388 F.3d 1189, 1193.

There are 400 players available in the video game, and so the tattoos only appear when the three players featuring the tattoos which copyright is owned by plaintiff appear in the game. Also, the tattoos appear very small in the game and thus are very difficult to see. For Defendant’s the tattoos “are just one of the myriad of elements that makeup NBA 2K” (p.13).

Use is fair use

Defendant is also arguing that it “is not a rival tattooist that has replicated a creative design and inked it on a new person. Rather, its use is completely different in a massive, highly creative video game featuring a virtual world that only uses player tattoos to realistically capture how the players actually look. Each of the factors that courts consider supports a finding of fair use.”

Defendant reviewed each of the four fair use factors and argued that each of the factors is in its favor.

The first factor, the purpose and character of the use, is in Take-Two’s favor because it “uses the Tattoos for a different purpose than that for which they were originally created. While the Tattoos originally were created as the NBA players’ self-expression, Take-Two uses them merely to replicate how the players appear in real life.”

The second factor, the nature of the copyrighted work, should also be in Defendant’s favor because “Take-Two uses them to depict the world accurately.”

The third factor, the amount and substantiality of the portion used, should be in Defendant’s favor because the “use was reasonable given that its purpose was to depict real life accurately, and using any less of the Tattoos would defeat that purpose.”

The fourth fair use factor, the effect of the use upon the potential market, should be in Defendant’s favor because Plaintiff “admitted that it is contractually prohibited from inking the Tattoos on other people, meaning that Take-Two’s use cannot harm that market.”

What about right of publicity?

This is a copyright infringement suit and the players are not parties in the suit. However, one could imagine that they could file a suit against the owner of the copyright of their tattoos for tortious interference in contractual relations, if not owning the copyright of their tattoos would prevent them from licensing their likeness. On the other hand, one can argue that the owner of the copyright has the right to be financially compensated if the work is reproduced, especially for in a commercial venture.

These players are celebrities, but our likeness is more and more used for marketing purposes. A few thousand followers on social media may land us all a lucrative marketing deal. If we sports tattoos but do not own their copyright, should we secure a license before posting selfies? As Jack London once said [on Twitter]: Show me a man with a tattoo and I'll show you a man with an interesting copyright license.

Wednesday, 16 August 2017

The CopyKat - mid August musings for copyright monkeys



For years in the USA, there's been ample debate and scholarly literature over whether there really exists a crime for secondary copyright infringement. On Friday, a federal judge in Illinois probably made the day for big copyright holders by ruling that the U.S. Government has properly indicted Artem Vaulin, the alleged founder of KickassTorrents. A copy of the judgment can be viewed in full here.
Vaulin is currently in a jail cell in Poland after the 31-year-old was charged last year by U.S. authorities with running one of the world's most popular places to illegally obtain movies, television shows, songs and video games.
Judge John Lee takes up the issue of whether secondary liability for copyright infringement can be extended from the civil realm to the criminal one. In his decision the judge says that Vaulin is basically missing the big picture.
"[A]s should be clear by now, the indictment does not charge Vaulin with common law secondary liability... Rather, the indictment relies on the text of the congressionally enacted conspiracy and aiding and abetting statutes... Thus, the indictment charges Vaulin not with crimes based upon common law theories, but for conduct made unlawful under unambiguous statutes."
Dawn of Planet of the Apes Halted as Peta call time on Monkey Selfie Case


Naruto, via his self-appointed lawyers from the People for the Ethical Treatment of Animals, is in the process of dropping his lawsuit over the now infamous monkey selfies. That's according to a Friday legal filing with the San Francisco-based 9th US Circuit Court of Appeals, which is being asked to hold off on issuing a ruling that everybody believes is going to go against Naruto.
Nobody would say publicly what the deal is, or why this is happening. However, during oral arguments in the case last month, a three-judge panel of the court of appeals eviscerated Naruto's arguments.

On the positive side though, PETA's lawsuit has prompted public discourse about the idea of animals owning property. And that's why this lawsuit may have been about nothing more than monkey business all along.

Sony is being sued for using a song by glam rock band T. Rex in summer blockbuster Baby Driver "without permission".
The son of late frontman Marc Bolan has filed a lawsuit accusing the studio of copyright infringement over the use of the band's hit Debora. A full copy of the suit can be viewed here.
Feld Bolan won the rights to the works of his father's band three years ago and is seeking punitive damages.
"Inexplicably, defendants failed to obtain - or even seek - the permission of the composition's US copyright holder Rolan Feld," said the complaint filed in Los Angeles federal court.
Feld was made aware of the use of 'Debora' when a Sony Music representative contacted his lawyer to request a licence to use the track on the movie's soundtrack release. The complaint claims that Feld then let Sony know that use of the song in the movie was "unauthorised", but Sony is said to have responded with "conflicting explanations", and Feld says they have now ceased communications.


Cards Against Humanity owns copyright number TX0007492177 at the US Copyright Office for its “base” set and numerous other copyright for its expansion packs.

The company has used the trademark ‘Cards Against Humanity’ since 2009, along with the tagline “A party game for horrible people”, its trade dress, which consists of white lettering on a black background with vertically aligned text, and a three-card design.

Cards Against Humanity is sold to US consumers through Amazon, its own website, eBay and, since 2014, various selected retail stores. A US judge has granted the owners of card game Cards Against Humanity an injunction against Skkye Enterprises, a company accused of selling counterfeit versions of the game. 

Cards Against Humanity filed a copyright and trademark infringement claim(pdf) against Skyye in September 2016 at the US District Court for the Eastern District of Missouri.
District Judge Audrey Fleissig granted (pdf) a permanent injunction and default judgment on Wednesday, August 9.On copyright infringement, Fleissig said that an award of $12,000 per infringement, totalling $60,000—or three times the highest estimated sales of defendants’ infringing game—in combination with the other damages, is a “just and suitably deterrent outcome”.The court awarded $20,000 per trademark infringement, for a total award of $60,000, which Fleissig said “compensates plaintiff in a fashion consistent with the purposes of the Lanham Act and case law”.

Cards Against Humanity was also granted an injunction against Skkye, along with an order for destruction of infringing goods.It was also awarded attorneys’ fees, subject to a further submission to the court on their reasonableness.

This CopyKat from Matthew Lingard

Saturday, 5 August 2017

Former Professional Wrestler Sues Van Morrison for Using his Likeness without Authorization


Billy Two Rivers, a former professional wrestler, is suing musician Van Morrison and his record label company, claiming that, by using his likeness on the cover of the upcoming Roll With the Punches album, they infringed his right of publicity, as protected by New York State’s statutory right to publicity, New York Civil Rights Law §§ 50 and 51, and false endorsement under the Trademark act. The case is Two Rivers v. Morrison, 1-17-cv-05720 (Southern District of New York).

To say that Plaintiff has had an interesting life is an understatement, as he was a professional wrestler from 1953 to 1977, competing in Canada, the U.S. and abroad. He appeared in ten films and television programs. After retiring, he was for 20 years a leader of the Mohawk nation on the Kahnawake reservation, as an elder and a counselor. He is still recognized as an elder and advisor to the First Nations people. The British band The Dogs D’Amour named a song after him in 1988, and Pulitzer Prize-winner Paul Muldoon wrote a poem, “My Father and I and Billy Two Rivers”, about watching Plaintiff competing in a wrestling match. A British racing horse was named after him, with Plaintiff’s consent. 


Roll With the Punches will be Van Morrison’s 37th studio album and is set for release on September 22, 2017. Its cover features a black and white photo of Plaintiff engaged in a wrestling match. The cover of the album was used to promote Van Morrison’s tour, and generally to promote the sale of the album, both online and off-line. Plaintiff claims he did not authorize the use of this photo for the album cover. The complaint alleges that he was not even contacted by Defendants.

New York Civil Rights Law § 50, enacted in 1903, makes it a misdemeanor for “[a] person, firm or corporation [to use] 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...” We saw in a former post that the New York Legislature is actively trying to expand the scope of the law. However, Plaintiff does not need such expansion to file his suit. If the fact alleged in the complaint can be proven, it is a clear case of unauthorized use of likeness for commercial purposes.

Plaintiff is asking the court to enjoin any further use or dissemination of the cover, and to permanently dispose of the albums already produced. He is also asking the court to award him punitive damages.  The case just settled out of court.

Thursday, 3 August 2017

THE COPYKAT

Linns Stamp News tell us that a federal judge has ordered a dispute over the "Lady Liberty" stamp that the United States Postal Service mistakenly produced in 2010 to go to trial in September. Federal Claims Court Judge Eric G. Bruggink rejected motions by both the Postal Service and sculptor Robert S. Davidson that would have effectively ended a four-year-old lawsuit over a stamp that was based on a replica of the Statue of Liberty. Davidson created the Lady Liberty replica, which stands outside the New York, New York Hotel & Casino in Las Vegas. The postal official who oversaw stamp designs later said he would have never selected that image if he had realised it featured a replica - which also would have protection as a  “sculptural work”  under the US Copyright Act with the Judge noting “There is no question that plaintiff was invoking the Statue of Liberty, in his replica, but he argues that his intent was not merely to copy and that the replica is unique.” The error was identified by Sunipix, a stock photo agency in Texas. Wikipedia says ten and a half billion of the stamps were produced.


A photographer is suing consumer products giant Procter & Gamble in the US, accusing the corporation and the world’s largest advertiser of not paying her for photos that have appeared on Olay packaging and marketing materials used around the world. The Cincinnati Enquirer reports that 46-year-old Annette Navarro has spent over a decade photographing models who have graced the packaging of a number of notable consumer products. Her photos have also been used by P&G $2 billion Olay skin care brand for 14 years. Navarro is accusing P&G of using her photos beyond the scope of her license, which limited usage to within North American and a 3 year period. 


And more photography: US District Judge Sidney H. Stein has just ruled that the case between photographer Donald Graham and 'appropriation artist' Richard Prince can proceed. Graham took issue with Prince for using his images in an exhibition of re-appropriated Instagram images at the Gagosian Gallery in NYC - and Graham never gave any permission for his image titled “Rastafarian Smoking a Joint” to be used. Many comment that any 'transformation' is minimal (at best), being little more than enlarged Instagram screenshots. Judge Stein said “The primary image in both works is the photograph itself. Prince has not materially altered the composition, presentation, scale, color palette and media originally used by Graham.” Prince escaped relatively unscathed in his last battle, Cariou v Prince, with the appellate court saying "Here, our observation of Prince's artworks themselves convinces us of the transformative nature of all but five".

And finally on photography, a New York federal court judge handed a photographer a mixed result when the court dismissed her copyright infringement claim but allowed her Digital Millennium Copyright Act (DMCA) allegations to move forward in a dispute that began on Instagram. The case involves photojournalist Matilde Gattoni, based in Italy, who photographed a colourful building in Essaouira, Morocco, that included the figure of a woman in a long dress walking down an empty street. In August 2016, she placed the photograph—which has a pending copyright registration in the United States—on her Instagram page, accompanied by a copyright notice. Gattoni claims that one month later, clothing retailer Tibi copied and cropped the photograph (removing the woman) and placed this image on the company’s social media page without licensing the image or obtaining her consent to use it. But US copyright had only been applied for, not registered, so could there actually be an infringement?  There's an excellent article from Jesse M. Brody of Manatt Phelps & Phillips LLP here on Lexology that analyses this and the DMCA claim. Well worth a read.


A New York judge has dismissed a lawsuit brought the estate of promoter Sid Bernstein, who staged the Beatles’ legendary 1965 show at Shea Stadium. The Estate had argued that band’s Apple Corps had infringed on the copyright of Sid Bernstein Presents by including footage from the concert in Ron Howard's  documentary film Eight Days a Week - the Touring Years which was released in September 2016.  The Estate's action sought ownership (or joint ownership) of the master tapes and copyright by Bernstein’s company, Sid Bernstein Presents, arguing that, “[w]ithout Sid, the mastermind of the event, this film would never have been made”. In a ruling on the 26th July, Judge George B. Daniels, in the US District Court for Southern New York, said the company could not claim ownership of the footage as Bernstein did not himself film the concert, instead signing over the rights to do so to Nems. Judge Daniels held:  “The relevant legal question is not the extent to which Bernstein contributed to or financed the 1965 concert .... [R]ather, it is the extent to which he ‘provided the impetus for’ and invested in a copyrightable work" and “The complaint and relevant contracts clearly refute any such claim by Bernstein. By the express terms of the Nems-Bernstein contract, Bernstein had no control over the filming of the concert” and that the contract signed in 1965 “reserves no rights whatsoever for Bernstein in any filming or recording of the concert.”

Billboard reports that Beyonce's legal team is going to have to work a little harder to defeat a copyright infringement lawsuit over her hit "Formation." Spoken word from the late Anthony Barre (also known as Messy Mya) features on the song, and his estate sued in February for copyright infringement, (there are other claims). Barre's voice is heard saying “What happened at the New Orleans,” “Bitch, I’m back by popular demand” and "Oh yeah baby. I like that.” His sister, Angel Barre, claims the samples infringe the rights in two works of her brother's performance art, "A 27 Piece Huh?" and "Booking the Hoes from New Wildings." Louisiana federal judge Judge Nannette Jolivette Brownon denied Beyonce's motion to dismiss the copyright claim on fair use grounds and noted that Barre had made a case that Beyonce's use of the clips was not transformative and that, although the samples were short, it was a "qualitatively significant" use". Judge Nannette Jolivette didn't t agree with Barre's argument that the fair use doctrine doesn't apply to the digital sampling of a sound recording. Judge Brown also denied the motion to dismiss Barre's false endorsement and Louisiana Unfair Trade Practices Act claims, but did dismiss a claim for unjust enrichment.


Tuesday, 1 August 2017

Cabin Fever: Is Reconstructing a Work to Preserve It Copyright Infringement?


Lolita wrote about this copyright infringement suit on last week’s CopyKat. It deserves a second glance.

Artist Cady Noland created her Log Cabin sculpture in the nineties, which is made out of wood and resembles the façade of a log cabin, along with two U.S. flags which are “an integral part of the sculpture.” The work is approximatively 12 feet high, 18 feet long, and a little less than 6 feet wide.

Art collector Wilhelm Schurmann bought the work in the nineties. He loaned it to a museum which exhibited it outside for ten years. Log Cabin was then exhibited at the Michael Janssen Gallery. However, it had deteriorated over time, and an art conservator recommended in 2010 to reconstruct it entirely with new materials and new logs. The complaint alleges that Cady Noland was not informed about this decision at the time but instead learned for the first time in 2014 that the work had deteriorated, had been reconstructed, and the decayed material thrown away.

Cady Noland has taken the position that her work has thus been destroyed, and filed a copyright infringement suit in the Southern District of New York against the Michael Janssen gallery, Michael Janssen, and Wilhelm Schurmann, claiming that rebuilding Log Cabin was copyright infringement, and that its destruction had violated her moral rights under the Federal Visual Artists Rights Act of 1990 (VARA), 17 USC § 106A.
This is not the first time Log Cabin is at the origin of a law suit. The Michael Janssen Gallery had found a buyer for the work in 2014, but Candy Nolan disowned it after discovering it had been rebuilt. The deal fell through, as the purchase agreement had a clause which directed the gallery to buy back the work if the author disowned it. The buyer then sued the gallery claiming he was owed money, but lost.

Disowning a work

VARA, 17 USCA § 106A(a)(2),  gives the authors of some works of visual arts the right “to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation. . . ." Cady Nolan used her right under VARA for Log Cabin. She also disowned her Cowboys Milking work, and was then sued in 2012 by the art dealer who had consigned it to Sotheby’s, which had to take it down from sale following the disownment. The owner of the work then sued the artist and the auction house, but lost.

A little bit of comparative law… Article L. 121-4 of the French Intellectual Property Code gives authors the right to disown their work, provided that they financially compensate the owner of the work.

Is Log Cabin protected by copyright?

The complaint in our case informs that Log Cabin is not registered with the Copyright Office, as copyright registration has been refused. Plaintiff is seeking to have her ownership of Log Cabin’s copyright recognized by a declaratory judgment. 

Since Cady Noland has disowned her work, should her request be interpreted as asking the court to declare that she owned the copyright in the original Log Cabin, now destroyed? Or is Cady Nolan only, or also, asking the court to declare that she owns the copyright in Log Cabin, in its current state?

For the sake of discussion, let’s assume that Cady Noland owns Log Cabin’s copyright.

Is rebuilding Log Cabin copyright infringement?

Section 106 of the Copyright Act grants several exclusive rights to an owner, among them the right to reproduce the work: “the owner of copyright under this title has the exclusive rights to … reproduce the copyrighted work in copies or phonorecords.” If Log Cabin is indeed protected by copyright, and if Cady Nolan owns that copyright, only she has the right to reproduce it. Cady Nolan considers the reconstructed Log Cabin an unauthorized copy, not an act of preservation.

VARA gives authors of a work of visual arts the right “to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and… to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.”

Does the owner of a work protected by copyright have a duty to preserve it?

Cady Nolan also claims that Wilhelm Schurmann was negligent or indifferent in preserving the work, which led to its deterioration, and thus its destruction, leading to the violation of Plaintiff’s copyright and moral rights. 

The case is an Art Law professor’s dream come true…