Wednesday 19 June 2013

$3.6m damages for copyright infringement?? Buzz off!

There is a lot of questionable content on there, but I am willing to admit it, I really like BuzzFeed. The site consists of posts on the most wide-ranging random content, usually containing videos, images and/or links - some of it very amusing. (You really need to have a look to appreciate...although maybe not on "work-time".)

It turns out that permission of the content creators is not always sought, before it is posted on the site. Now a photographer, whose photo was used in a BuzzFeed post without his consent, has taken a stand and filed a copyright infringement claim against the site.

Reports the Guardian:
The professional photographer, Kai Eiselein, filed a legal claim against Buzzfeed after finding his picture had been used without permission in a comic compilation of football mishaps. His picture of a grimacing player was removed from the article – now titled "The 29 Funniest Header Faces" – after he made an initial complaint in May 2011. 
But in a lawsuit filed in New York, Eiselein accused Buzzfeed of "direct and contributory infringement" and claims he is owed $3.6m after his work was shared widely across the web. 
He wants Buzzfeed to pay $150,000 in damages for each of the 23 sites that used his picture after the initial post, plus a further $150,000 for "contributory infringement" by another site, 
Eiselein confirmed he was taking legal action against the popular site and said: "It is time for creatives to stand up and say 'This is enough'. We work hard at our crafts and others should not be able to profit from our talents without compensating us." 
Asked why he is claiming such an inordinate sum in damages, he added: "In the suit I have asked for the maximum allowed by law. Ultimately it will be up to a judge and/or jury to decide the amount of damages, if any."
BuzzFeed founder Jonah Peretti has previously claimed, in a discussion with the Atlantic, that BuzzFeed’s use of photos are fair use under copyright law because they are transformative, which is the first of four factors considered by US judges in resolving fair use disputes.

If this claim makes it to court, it will open some very hot debates.

Read the claim here.

See the golden photo here.

What Peretti has said.

Source: The Guardian, 18 June 2013, The Atlantic, 30 April 2012

Tuesday 4 June 2013

"Prominence Invites Creative Comment"

Warner Bros, maker of the latest Batman film, The Dark Knight Rises, very recently defeated a trademark infringement lawsuit brought by software company, Fortres Grand.  The gravamen of the case was the movie's depiction of a fictional software product called Clean Slate that allowed characters to erase records of their criminal past.  As it would happen, Fortres Grand is the real-life maker of a software product also called Clean Slate.  Fortres Grand filed the lawsuit alleging that the movie's use of the Clean Slate name raised a likelihood of consumer confusion, the judge however disagreed, holding that consumer confusion was unlikely, and further that the movie's use of the name was fair use.

Several months earlier another film, Flight, was involved in a trademark squabble for its depiction of real-life brands without approval of the owners.  In Flight, a pilot's substance abuse problems were portrayed by using many real alcoholic beverage brands such as Budweiser, resulting in a request by Anheuser-Busch InBev, owner of the Budweiser mark, that its brand names be obscured in the film.

These two disputes seem to present a mirror-image of each other.  One in which a fictional work accidentally uses the name of a real brand, and one in which a fictional work portrays a real brand in a manner that the owner of the trademark finds objectionable.  These scenarios may fuel allegations of trademark infringement, tarnishment, false association, or product defamation, but such claims are likely to fail due to the First Amendment rights of filmmakers.  Distilled, the issue is whether trademark law gives brand owners the ability to censor creative works, and the answer is most often no.  When weighed against each other, the property right in a trademark by and large does not prevail over the First Amendment protection of artistic expression.

I can't help but wonder what it is about film that causes brand owners to object so readily, even when their trademark-related claims are weak.  Perhaps licensing and product placement have conditioned viewers to accept, or assume, that brands appear in films at the will of the brand owner.  Does this situation thus make viewers experience brands in films in a way that is more "real," (or perhaps more confusing)?

Pondering this question, I set about researching trademark disputes related to literary works, wondering when, if ever, trademark owners brought similar claims related to the content of books.  After turning over many stones, I identified many disputes related to book titles, yet was unable to find any cases truly challenging use of brands in books.  The closest case I could find related to a series of books about the "Pee Wee Scouts."  Doubleday, publisher of the books, was sued in federal court in New York for allegedly infringing the trademarks of the Boy Scouts and Girl Scouts.  Citing the title "Pee Wee Scouts" as well as certain content of the books (such as scouts using handbooks or attending national conventions), plaintiffs alleged that consumers would be confused into thinking the books were created or sponsored by plaintiffs.  The court disagreed, dismissing the case on summary judgment, a result that was resoundingly affirmed on appeal.

In a 2006 interview with the Paris Review, Stephen King spoke candidly on his reasons for very frequently using brand names in his works, even when he received literary (non-trademark related) criticism for doing so.  His answer focused heavily on creating accurate cultural references, on enhancing the image a reader may perceive while reading the book (think Jack Torrance taking all that Excedrin in The Shining).  Still these reasons seem just as viable in the context of film.  Indeed, there should be no difference.  As the court provided in the Pee Wee Scouts case, "It is at once apparent, when we deal with the content of a book or motion picture, that we deal with no ordinary subject in commerce. . . . Their importance as an organ of public opinion is not lessened by the fact that they are designed to entertain as well as to inform; . . . books and motion pictures are a constitutionally protected form of expression notwithstanding that their production, distribution and exhibition is a large-scale business conducted for private profit."  Girl Scouts of the United States v. Bantam Doubleday Dell Publishing Group, Inc., 808 F. Supp. 1112, 1120 (S.D.N.Y. 1992) (internal citations and quotations omitted).

Hat tip to Bob Cumbow and the World Trademark Review.

Monday 3 June 2013

Due regard for diligence

As a lawyer, due diligence is certainly one of my least favourite activities, but I accept that it can sometimes be crucial. This weekend, the Observer highlighted the importance of carrying out sufficient due diligence on potential art sales. It also emphasised the effectiveness of the Art Loss Register (ALR), which I discussed here back in 2010.

The Observer reports:
European auction houses, dealers and collectors are failing to make adequate checks to avoid handling stolen artworks, an art lawyer has warned after recovering from an Italian auction an old master painting taken from its British owner in a burglary more than 30 years ago.
Christopher A Marinello [the ALR's general counsel], who specialises in recovering stolen art and resolving title disputes, said: "We do find a lot of stolen and looted artwork in civil law countries such as Italy, France and Germany. Consigners of tainted works of art often try to hide behind the good-faith purchase laws of these countries while performing little or no due diligence."
He spoke to the Observer after negotiating the return from Italy of a landscape painting by Jan van Goyen, a 17th-century Dutch painter, which was stolen in 1979. Negotiations were particularly delicate because, under Italian law, if someone buys a stolen work in good faith the buyer is sometimes entitled to keep it. Marinello was able to prove to the Italian auctioneer that the painting was one of nine pictures stolen at night by criminals who broke into the home of Paul Mitchell, an antique picture frame specialist in London.
[Marinello said]: "The Italian auction house involved did not search the work with the ALR, but the dealer did. While losing out on a potential future sale, the [dealer] protected his reputation and saved himself significant sums in legal fees defending a case over title to the painting." Unless more dealers, collectors and auctioneers make such checks, he added, other stolen items will remain undetected. "It's the same concept as having a survey done prior to purchasing a home. Considering the values involved, why wouldn't you want to know if there were serious title issues before purchasing fine art?"

Source: The Observer, 1 June 2013