Fair Use of Videogame Screens

I'm showing my geek roots, here, but it's not like I've been hiding that.

I came across this article which pointed me to three recent paintings by Brock Davis (a/k/a Laser Bread), all of which are the painter's takes on some classic videogames.

I'll put the game names at the bottom, because it should take about half a second for gamers of a certain age to recognize these.




And for those of you think of gaming systems [obSnydeQuipMaskingJealousy], that's Dig Dug, Donkey Kong, and Missile Command.

The geek in me abso-lurves these, for aesthetic and nostalgic value. The lawyer in me went directly to the fair use analysis.

There's no question that the iconic videogame screens that these paintings are based on are subject to copyright. Actually, there is some question, as it can be argued that the Missile Command and Dig Dug screens were jointly created by the end user, but that's a question for another post. Let's just take that point as read.

The fair use analysis is actually fairly straightforward. You've got a transformative use that will have no impact on the market for the games, or even (taking a more controversial reading of the fourth factor) the potential derivative market for the games. That's factors one and four in favor of fair use. Factor four used to be the "first among equals," more recently the question of "transformative use" is filling that role, but in this case both cut in favor of finding fair use.

Admittedly, the game screen is a creative work, which puts factor 2 in the not-fair-use column. and it could be argued that the amount taken is substantial - it would depend on the determination of what, exactly, constituted the work; is it the game overall or individual screens. But these are relatively weak and would bow in any event to the determination mandated by factors 1 and 4.

Another question would be the trademark implications. These images are, I would posit, fairly iconographic, and each of the screenshots then very likely identify a source (Namco, Nintendo, Atari respectively) The proof is in the pudding, in that (as noted) gamers of a certain age probably recognized the game identities from the paintings without any difficulty.

I don't have a link, but I recall seeing sites where you can submit a digital image and get a painting. Presumably to different levels of abstractness. In which case Atari might be able to argue that a consumer seeing the paintings might be confused as to the source or - in this case the stronger argument - sponsorship of the paintings.

Fair use analysis in trademarks tends to concentrate on the whole "nominative use" question, but that won't do any work for us here. Trademark fair use as a doctrine is mainly concerned with trademarks that are also words in the language and limitations on the extent to which trademark rights can curtail the use of language. Which, sadly, also doesn't do much work for us here.

So on a purely doctrinal level, it seems that the game makers could make at least an objectively reasonable (not Rule 11 sanctionable) trademark infringement case against the artist, claiming that consumers might mistakenly believe that the game maker had sponsored the painting. And his defense would have to be "no they won't," which is a poor defense in that it doesn't do any work pre-trial, or at least pre-survey -- which is to say pre-expensive.

The saving grace for Mr. Davis might be the practical factors militating against the manufacturer's bringing suit, to wit, the negative publicity, the paucity of available damages, the relative age (value) of the marks allegedly infringed, etc.

I think that's the right answer on the law, but it disappoints me on the facts. There should be space in the law for exactly this kind of expression. I touch on this briefly in my post about the Carol Burnett - Family Guy dustup here. And this is another example of where the conversation of our world is being impeded by the very laws that were intended to protect that conversation (albeit a different facet of that conversation.)

--B

Art Galleries and Catalog Images

If you've ever received an art gallery catalog, I'm sure the same question has occurred to you that occurs to me every time. To wit, "on what basis do these galleries and auction houses
publish on-line or electronic catalogs of this visual art without permission from the copyright holder? Or even the print catalogs, really?" (For an example, go to the Christie's site and find your way to a catalog; I don't want to permalink anything, because they change.)

What, that's never occurred to you? Honestly? Yeah, me neither. But it did come up on a mailing list in which I'm involved. For a group of lawyers with IP backgrounds, I'll be honest, I was a little disappointed by some of the analysis. (Except for mine, of course. My analysis was brilliant!)

The various ideas that were floated included fair use and "public display." Fair use is relatively well known, and comes up on the internet a lot. Public display is what you might think, though it comes at it backward. That is, there is a right [under Section 106(5)] ostensibly exclusive to the copyright holder to display a work publicly, where both display and publicly are terms of art, subsuming everything you might normally think falls into those definitions and then a little bit extra. However, that right is limited by Section 109(c), which allows the owner of a lawful copy of a given work to display that work publicly, "either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located."

In other words, that really funny New Yorker cartoon you have on your office door? Section 106(5) would prevent you from putting it up there, except that 109(c) comes to your rescue.

Public display gets a little trickier when it comes to certain works of visual art that require some element of reproduction in the display. The way it's taught is in terms of some of the more modern art pieces that involve a video display element or the like; in such a situation, the public display right entitles the owner of the work (not the copyright, mind you) to engage the video display element even though there might be some otherwise-verboten reproduction involved. Public display doesn't generally include the broadcast of audiovisual media.

A more salient (and possibly more controversial) application would be where a piece of art requires, for security or conservation purposes, that it be displayed (for instance) via audiovisual reproduction. So some artist makes a painting on... I dunno, dry ice. The only way to see (for more than however long it might take to otherwise sublimate) it is to put it in some special freezer and point a camera at it and look at on a monitor. It's fairly uncontroversial, though not entirely uncontested, to say that the display of the work on that monitor by the owner is allowed under Section 109(c), even though that might involve a sort of reproduction.

All of which is by way of a tangent, really, just to explain the possibility raised by some that the electronic and/or paper catalogs were permitted under 109(c).

Which proposition, I should say, I think is a bit daft. First off, 109(c) is explicit in its limitation to "no more than one image at a time, to viewers present at the place where the copy is located." Second, if you think about it, that would be an exception that swallows the rule. On that understanding, pretty much any time someone made copies of something that other people wanted to see and distributed same, online or in print, the claim would be that it was distribution of the originally purchased copy of the work. Which is sort of one of the paradigm cases of infringement, isn't it?

So it's not Public Display. Fair Use, then? Again, I don't think so. Running through the four-factor test shouldn't be too difficult.

We just need to more clearly define the possible infringement.

(1) It's not at all transformative. You might argue that the catalog information on the page adds some sort of value or information, but that's a bit specious. (2) Except in rare instances, we're probably talking about something "fictional," which is to say that art is more fanciful than the reporting of facts (even photography). (2a) There is the mitigating factor that it's 'published,' but I don't think that really does too much work here. (3) The taking is of the whole of the creative/infringed work, and certainly the "heart" of it - if the catalog photo wasn't sufficient to reproduce at least the core of the painting in question, it wouldn't be much good as a catalog photo.

The only thing working in favor of Fair Use would be (arguably) the fourth factor. It's the one time an alleged infringer could make that "I'm doing you a favor" argument with a straight face. The purpose of a catalog is, ostensibly, to *assist* the copyright owner in gaining income and to *support* (or create) the market for the copyrighted work.

But the fourth factor is no longer the first among equals that it used to be, and even if it were, I think the other three win.

So, if it's not Public Display and it's not Fair Use, why aren't artists suing the various galleries left and right for copyright infringement?

I think there are two factors in play, one practical and one legal. The practical concern is on the lines of biting the hand that feeds you. The artists with a claim have that claim because there's a gallery (or auction house) out there trying to sell their work; It would be ungrateful, and more importantly unwise for the artist to turn around and sue the gallery for the catalog that represents that effort.

The legal doctrine on which these galleries and auction houses rely, I think, must be implied license. That is, once the artist or copyright holder gives the piece over to the gallery or auction house, then there is implied in that act the copyright holder's license to the gallery or auction house to make what reproductions might be standard in the industry, including reproduction in catalogs, etc.

It becomes a little more complicated when we consider that very often it's not going to be the original artist who's commissioning the gallery or auction house to make the sale. I don't really have a convincing argument for why the erstwhile buyer (now reseller) can grant the kind of license we've been talking about. You could make an argument if pressed - it would be what we in the trade call "not sanctionable" - to the effect that the original copyright-holder's implied license extended to include those reproductions necessary for resale.

That last argument is the best I can come up with, weak though it is. Either way. I'm confident that what's at work is not the 109(c) public display and not fair use. The implied license works well when the grant is from the original copyright holder. And then that last... But there it is.

Have a good one.

--B

Ear-Tugging Actually Means "Call The Lawyers."

So it seems Carol Burnett is suing the necessary parties behind Family Guy because they appropriated her cartoon "charwoman" character and for disparaging her personally, etc. (Hat tip to Ron Coleman, here.)

It takes little imagination to anticipate that the studio will claim parody as a defense, at least in part. But it's clear that the studio still has its PR people doing the talking, instead of its lawyers, because the reported statement by the studio does a nice job of making the lawyers' jobs much harder: "'Family Guy,' like the 'Carol Burnett Show,' is famous for its pop culture parodies and satirical jabs at celebrities."

You can just hear the lawyers groaning. If it's a pop culture parody, then there's an arguable defense; if it's a satirical jab at a celebrity, then you've got a problem.

That distinction, made by courts and practitioners alike and premised on the Campbell v. Acuff-Rose decision, is actually a pretty fair one, to a point. The reasoning starts with the eminently reasonable assertion that if I'm going to make fun of (comment on, disparage, analyze, play on, whatever) Work X, I need to be able to "conjure up" Work X sufficiently. The point of a joke is that it builds on and then subverts expectations; in the case of parody the expectations in question is the original work.

Once I move away from commenting on the work itself, though, that rationale breaks down. If I want to make fun of {anything NOT Work X}, I should be able to do so without calling on someone else's copyright-protected work; I certainly can't say that I need Work X.

It's not uncommon (and there's an example of litotes right there) to see accused infringers raise the parody defense - more often than not inappropriately - and it drives me up the wall. Yiddish mit Dick and Jane and the JibJab video are two examples that spring to mind, but there are myriad others. (And quite honestly, I think the Supremes decision concerning Big Hairy Woman was a stretch, as well.)

The way to think of it is to ask if there's another work besides the allegedly infringED work that could serve the purposes of the allegedly infringING work just as well. So if I wanted to point out some inherent flaw or hypocrisy in the Dick and Jane books I would have to use the Dick and Jane characters, scenarios, cadence -- I would have to evoke Dick and Jane. But if I want to make a point about teaching Yiddish in little-kid-book terms, then my ends would be served as well by evoking Dick and Jane as by evoking Thomas the Tank Engine or Poky Little Puppy.

Similarly, This Land is Your Land speaks to a certain unity of Americans across social or cultural divides, and set the JibJab animation up nicely since it addressed a certain animosity and divisiveness across social/cultural divides, while at the same time making a more subtle point about citizens being united in their disdain for the politicians in question. The song was a great choice, but certainly not the only choice possible to serve that purpose.

So too, in the instant case. You have to ask, "what's the joke?" If the point is that Carol Burnett presents herself to the world as particularly moral or upright, and the gag is directed to undermining that, then you've got a parody. Family Guy couldn't make that point about Carol Burnett unless they evoked Carol Burnett. (A little back-story: according to The Smoking Gun the Family Guy had asked to use Carol Burnett's theme song in an episode, and she refused.)

On the other hand, if Family Guy was just making a point about... well, it's hard to think of it out of context. If Family Guy was making a point about how celebrities of the past had fallen, under this analysis then that's satire and that's not protected. Sort of.

"Sort of" because of footnote 14 in Campbell v. Acuff-Rose, which is so exquisite as to merit quotation in full:

A parody that more loosely targets an original than the parody presented here may still be sufficiently aimed at an original work to come within our analysis of parody. If a parody whose wide dissemination in the market runs the risk of serving as a substitute for the original or licensed derivatives (see infra, discussing factor four), it is more incumbent on one claiming fair use to establish the extent of transformation and the parody's critical relationship to the original. By contrast, when there is little or no risk of market substitution, whether because of the large extent of transformation of the earlier work, the new work's minimal distribution in the market, the small extent to which it borrows from an original, or other factors, taking parodic aim at an original is a less critical factor in the analysis, and looser forms of parody may be found to be fair use, as may satire with lesser justification for the borrowing than would otherwise be required.

At one level, the footnote is nicely in line with the rest of the analysis and contemporary thinking on Fair Use, in which the fourth statutory factor is considered first among equals. The Court here saying, essentially, that where there's less market substitution the requirements are more relaxed, and when there's more risk of market substitution it is "more incumbent on one claiming fair use to establish . . . the parody's critical relationship to the original."

(Sidebar: Some argue that the Campbell decision steps back from seeing factor four as first-among-equals. I don't read the opinion -- especially footnote 14 -- that way, and in any case at least one Circuit has held that factor four is still primary, and that's the way Professor Hughes teaches it.)

Read closely, however, footnote 14 opens the door to satire being fair use. "[W]hen there is little or no risk of market substitution . . . looser forms of parody may be found to be fair use, as may satire with lesser justification for the borrowing than would otherwise be required." (emphasis mine).

I call this exquisite because there's a huge problem with the parody/satire distinction and how parodic fair use doctrine has evolved. At first blush, the parody/satire distinction makes sense, and seems to leave plenty of room for the free speech that is the raison d'etre of Fair Use in the first place.

But on closer analysis it becomes clear that parody is far too narrow a defense. Looking at each case individually, the parody/satire distinction works. That is to say, the 'real' Dick and Jane people claim (rightly) that the Yiddish with Dick and Jane book isn't a parody of Dick and Jane, but a satire or social commentary (or just a joke or other expression) that leverages Dick and Jane to make a broader point, and they can point to Poky Little Puppy and Thomas the Tank Engine to make their case, claiming that those would serve just as well.

Similarly, the Guthrie estate could make the same claims about the JibJab video, pointing to some other song that approximates the underlying message of This Land is Your Land. And Carol Burnett could make the same argument, as well. If the message is that celebrities of the past have been brought low. . . I'm sure somewhere there's a relevant animation of Gallagher out there somewhere.

The problem arises when the situation is looked at globally. Because Dick and Jane points to Poky Little Puppy, but Poky Little Puppy is protected by copyright, too. And so is Thomas, and so are most songs that would serve instead of This Land, and so is that Gallagher animation, and so on.

We live in an incredibly referential world, where a huge chunk of our lexicon points to and leverages the expression of others, the vast majority of which is legally protected (by copyright and/or trademark). There's an ongoing conversation threading its way through our culture, and it's becoming more and more difficult to participate meaningfully in that conversation without stepping a little bit over the lines that have apparently been drawn.

How many times, for instance, have you heard or read a poem that takes a mostly octameter acatalectic trochaic poem -- which describes adequately for these purposes The Raven by Poe -- and applies it to some light subject such as cats or hardware malfunctions (or even a not-so-light subject like bombs in Italy)?

Now, okay. The Raven is in the public domain, but pretend for a minute that it was still protected. The linked poems could at least arguably infringe, or at least come close to infringing, and a more comprehensive search could probably turn up so-called parodies that hew more to the line set by The Raven than these do. As well, those poems are emphatically NOT parodies of Poe's poem. They say nothing about, and are not intended to say anything about Poe's poems or Poe himself.

What they do, though, is use the cultural currency that inheres in Poe's poem - the fact that it's so well known, the fact that it's so dark and so effective at communicating that darkness. The poems use that currency as a launching point for their own contributions to the hum of creativity, taking something light and treating it with too much seriousness, or (in the case of that last one) taking something serious and recasting it in terms more readily available to a reader.

It's those contributions that are being stifled under the current proprietarization (there's probably a better word for that) of culture and expression. When we think of the phrase "fair use" without out lawyers' hats on, we think that kind of use should be allowed, because it's fair. Fair to the creator, because it's only taking that which they already sent out into the world, and fair to the world because it allows us to have richer, more subtle, more complex interactions within it. When we put our lawyers' hats back on, though, that expression is disallowed.

Fair use is supposed to be the safety valve for exactly that sort of problem, but the way fair use has been limited -- particularly by the current understanding in practice of parody/satire -- is limiting the doctrine's ability to serve that purpose. Footnote 14 begins to address that issue, by opening the door for "satire," for which I want to read {NOT parody}, where the economic harm to the original creator is minimal.

I don't think the Caroll Burnett - Family Guy case will take us there, but you never know. In any event it will be interesting to see where and how the doctrine develops, and if Footnote 14 is ever given its due.

--Ben D. Manevitz

Fair Use and Fee Shifting

Well, it's been a pretty busy week for Mr. IPNotions. Not so much online, but I've been scampering around IRL, and now I'm gonna talk about (some) of it.

On Wednesday, I went to the Modest Proposals 3.0 conference at Cardozo. There were five really interesting proposals made, but I want to focus on Mike Carroll's "Fixing Fair Use" proposal.

Unfairly distilling a significant paper, a four-page proposed statute, and an hour's worth of speech and question-and-answer to a three-line summary, the Professor Carroll's proposal comes down to setting up a three-judge panel to adjudicate fair use questions ex-ante the putative use, resulting in narrowly binding but published decisions. The decision is formally reviewable by Circuit courts, and de facto reviewable by District courts.

The proposal was evocative of a presentation Professor Nimmer made last year (when I was still in flagrante LL.M.) that he called FUDGSICLE. I don't remember how the acronym unpacked, but his idea (again, unfairly distilled) was to set up voluntary, non-binding arbitration on the question of fair use ex-ante the putative use, resulting in decisions probative to any later inquiry into good-faith or willfulness. As I recall, in fact, Nimmer's proposal was that (for instance) if the arbitration panel deemed a particular use fair, then the copyright holder would be barred in later litigation from claiming bad faith or willfulness.

Carroll and Nimmer are both addressing a very real problem with fair use. Or rather two connected problems: the lack of certainty ex-ante the use (multiplied in any risk analysis by the potential for large statutory damages), and the high cost of defending against a charge of copyright infringement. And they both address the problem in a similar way, to wit, by introducing an element of certainty ex-ante (at a reduced cost) and relying on copyright holders to act in reasonable self-interest by only bringing suit in the very close cases, where the holder has a good chance of flipping the previous determination.

The issue I have involves the tendency of copyright holders - especially large IP-based businesses - to have an almost trademark-like protect-or-lose overzealousness when it comes to enforcing copyright. Neither of these ex-ante proposals prevents the copyright holder from holding the threat of an expensive suit in court over the heads of the risk-averse and/or cost-averse putative user. Disney or Viacom or someone will send a letter that comes just short of actually threatening suit (avoiding declaratory judgment actions) and that's usually more than enough to scare most users off. If you've already included the work in the new work, then go back and edit or just don't publish; if you haven't, then you find another way. In either case the fair use exception/limitation/defense/whatever is basically eliminated.

Setting up a cheap system for ex-ante determinations without making that system mandatory does little to eliminate the effectiveness of that kind of threat, particularly because the threat is leveraging not the possible loss attendant to a failure on the merits, but the certain loss attendant to defending the case - attorney's fees.

So what needs to be done is that these ex-ante determination processes need to be given teeth with regard to attorney's fees, so as to neutralize that part of the threat.

Right now, under Section 505, the court has discretion to award a prevailing party fees. In practice, it doesn't happen that often, and that's due in large part to the overwhelming reluctance to deviate from the US rule in US courts. That's fair, usually, but in the context of copyright cases - and the different ways they generally come to the court (or should come to the court) - it would be worthwhile to maybe skew that a little.

So, for instance, under Professor Carroll's proposal, the initiation of the fair-use adjudication process could trigger an automatic fee shifting provision in the event the matter goes to District Court, such that the party that initiates the inquiry in District Court (short-circuiting the Carroll adjudication process) would be liable for some or all of the attorney's fees of the other side in defending that case, to the extent that the defense had to do with fair use.

Under Professor Nimmer's idea, a party who acts in a manner to instigate suit after a a determination by the arbitration panel could be held for the attorney's fees of the other party if they prevail.

In either case, the ex-ante determination of fair use would then have the weight sufficient to defeat the threat posed by the cost of defense. Let's just put the metaphor in the blender: It would turn the Sword of Damocles into a shield. But not, you know, a shield hanging over your head...

--Ben D. Manevitz