The DMCA Is Not A Weapon for Great Justice

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(Note: I am an attorney, but I may or may not be licensed in the jurisdiction of any particular reader. Nothing in this post constitutes legal advice. Consult an attorney licensed in your jurisdiction and familiar with the relevant law before making legal decisions. In some jurisdictions, this post may be considered ATTORNEY ADVERTISING.)

This post was written for IndieGamerTeam – which you should check out!

All right, you’re really going to make me do this, aren’t you? I tried to tell you not to play stupid legal tricks with DMCA notices. But oh no, you wouldn’t listen.

*opens emergency cabinet marked IN CASE OF FAIR USE ARGUMENT, takes out and dons helmet which has a picture of an adorable mini-lop rabbit with a switchblade*

Let’s rock, nerd-person.

First of all, if you didn’t see my previous post about literally using DMCA notices as a Stupid Legal Trick, there’s a primer linked there on The DMCA Takedown Notice Demystified. You should read at least that primer, because it is informative, and preferably my post, because it is awesome. The summary? Don’t use DMCA notices as a Stupid Legal Trick.

Those of you who are plugged in to the Twitters probably know what inspired this post, but let me sum up a hypothetical:

  1. Developer posts Notice on their website that anybody who wants to can stream or post videos of people playing their games.
  2. NetPersonality posts a vid wherein they are playing a game from Developer.
  3. NetPersonality does something Bad, which Developer does not like, totally unrelated to Developer’s game and the aforementioned vid.
  4. Developer, without taking down Notice, DMCA’s NetPersonality’s vid, hosted on Host.

Who can tell me why this is a bad idea? Anyone? Anyone?

That’s right: it’s playing a Stupid Legal Trick with a DMCA notice. 

And that is, ALWAYS, a horrible, terrible, no good, very bad idea.

Now, in this case, as opposed to the situation I discussed last time, we’ll assume that most people would probably agree that what NetPersonality did was Bad. We’ll even assume that I myself would say it was Bad. But DMCA notices are not. For. Punishing People! Using them in that fashion just gives ammunition to the forces opposing the rights of small and independent creators, who would like nothing better than for DMCA notices to Go Away.

“But wait,” I hear you say. (I keep telling you to pitch that Google Home, but do you listen? No. I do, though.) “You put on your FAIR USE helmet! Why did you do that if you were just going to yell at a hypothetical Developer for abusing DMCA notices?”

Well, first of all, it is a very cool helmet. Secondly, because what Developer did in my hypothetical is an interesting reason to think about Fair Use. Ultimately, NetPersonality  has to believe in good faith that they have some legal grounds to use the game in their vid. Since they did literally copy Developer’s game, or at least portions of it, Fair Use is really the only grounds they have to counter-notice. So buckle up: here we go.

There are four Fair Use factors, plus the Zeroth Factor. The Zeroth Factor (“Is the alleged Fair Use bad?“) weighs against Developer, because the alleged Fair Use is unrelated to the Bad thing. But it also weighs in favor of Developer, because we’ll assume it was pretty Bad and therefore NetPersonality is assumed to be a Bad Person and we don’t like Bad People. I’m going to call it a wash and move on to the actual factors.

First Factor: The purpose and character of your use.

Essentially, this question boils down to “Is the use transformative?” If it is, this factor weighs in favor of the use being fair, because we want to encourage people to create new art. If not, it doesn’t, because we are not as concerned about people who just copy stuff. What transformative means is… complicated. But in this context, any use we might care about, be it a playthrough  or a straight up game review, is probably not transformative. For purposes of my hypothetical, I have decreed it thus. So this one weighs against NetPersonality .

Second Factor: The nature of the copyrighted work.

This refers, basically, to two sub-questions.

First, is the infringed work mostly factual (for instance, a biography of Abraham Lincoln) or mostly original (for instance, a comic book about Abraham Lincoln secretly being a vampire hunter?) If it’s mostly factual, the use is more likely to be fair, because facts cannot be copyrighted, and there are only so many ways to describe a given set of facts.

Second, did the creator of the infringed work publish it before the infringement? If not, the use is less likely to be fair, because the decision as to whether to publish a work is a very important one and we want to protect creators against having that decision taken away from them by infringers.

Developer published the game (point: NetPersonality ) but it is a largely original work of fiction (point: Developer.) This factor probably weighs slightly in favor of Developer, but it’s really not a huge win for either side.

Third Factor: the amount and substantiality of the portion taken.

You will note that in my hypothetical I didn’t say whether the vid was a drive-by, a full review, or a complete playthrough. That makes a huge amount of difference and in many cases of this type will be largely determinative of the outcome, especially when the fourth factor is added in.

“Amount” just means “How much, percentagewise, of the work did you copy?” Please note that there is NO magic number, for any type of work. There is no “eight bar rule,” no “twelve second rule,” and no “ten percent rule.” The more you copy, the more likely that the use is not fair, and vice versa. After that it is determined case by case.

“Substantiality” means “How important was what you took to the work?” Think of this, if you like, as the “Courts Hate Spoilers” rule. If you just take some random screenshot and put it up to show the general graphics style and production quality of the game, no big. If you show the six-minute cut scene that reveals the resolution of the entire plot, even if the game has six hours of cut scenes and six hundred hours of main storyline play, you are probably not making a Fair Use, you spoiling so-and-so.

If the vid is a playthrough, this factor weighs in favor of Developer. If it’s a straight review, it probably weighs in favor of NetPersonality unless the review includes extremely substantive copied material. If it’s a drive-by, it almost certainly weighs in favor of NetPersonality .

Now, pay attention: law is complicated. Despite what I said before, spoilers in and of themselves are okay, but copying substantial portions of the work which might contain them isn’t, largely because of the fourth factor. Namely…

Fourth Factor: The effect of the use upon the potential market.

Now this is where this hypothetical really gets interesting. Usually, this is about whether the alleged Fair Use will reduce the likelihood that people will buy the original work (or otherwise make it harder for the original creator to exploit it.) Making cheap, identical prints of someone else’s original artwork makes it harder for them to sell their own prints – that’s an easy one. Probably not a fair use.

Showing the play of the game including the ending makes it less likely that people will buy it because the ending has been spoiled – that’s a little harder. Arguably, the sort of person who watches a Let’s Play in its entirety wasn’t going to play the game anyway – or might still buy it because the playthrough looked like fun and they want to experience it themselves. Still probably not a fair use, but arguable.

Here, though, Developer demonstrably does not care if people post playthroughs. They have authorized the posting of playthroughs. It’s going to be very difficult for them to argue that another playthrough, more or less, will have any significant effect on the market. (Fancy Legal Term of the Day: “Estoppel.” Look it up.)

They could raise a different objection. Specifically, that allowing NetPersonality to associate themselves with the game will, somehow, harm the market for the game. I think that this argument is novel, in terms of copyright law. Would it work? Hell if I know. I think it’s a desperation argument, but that doesn’t make it an automatic loser. Until we know, I think that in context, this factor weighs heavily in favor of NetPersonality .

Okay, let’s sum up our factorial analysis. (I have a degree in math and that was a brilliant pun. Fight me.)

Factor Zero: Wash.

Factor One: Developer by a mile.

Factor Two: Developer, barely.

Factor Three: Depends on nature of vid. Playthrough: Developer. Review: (Probably) NetPersonality .

Factor Four: Absent success of novel legal theory, NetPersonality in a walk.

Result: Who knows? Are you asking me if the host should honor the DMCA notice, or whether Developer would win a copyright infringement case? Or what kind of damages Developer would be entitled to if they did in fact win a copyright infringement case? (In the legal biz, if you win the case and get no damages, that may or may not be considered a win.) You didn’t even tell me if the vid was a playthrough or a review, for crying out loud. How am I supposed to know these things?

Okay, seriously. I will say the following:

  1. In my opinion there was a much, much better way for Developer to proceed than by filing a cold DMCA notice, and it wouldn’t have been hard (or that expensive.) Note that this is in my hypothetical. I do not know what the developer in the situation which inspired my hypothetical did. For all I know they did exactly what I would have advised. Or something even cleverer, impossible as that seems. (NOTE: While nobody’s talking, for once, good for them, at this point it is not clear if the developer did anything at all or if the net personality took down the video of their own accord.) Will I tell you what it was? No. That would constitute legal advice. Any good copyright attorney would probably arrive at it very quickly, and almost nobody who wasn’t a good copyright attorney would come up with it at all. This is why you should hire an attorney before you attempt Stupid Legal Tricks.
  2. If I were counsel for Host in my hypothetical, I would advise Host to honor the takedown notice. If NetPersonality filed a counter-notice I would advise the host that they should honor the counter-notice. NetPersonality isn’t required to justify the counter-notice, nor is Host required to evaluate it for legal sufficiency other than that it must meet all technical requirements for a counter-notice.
  3. If Developer hired me to sue NetPersonality for copyright infringement in my hypothetical, I would advise them that the suit was not a slam-dunk, which is what I tell all my clients, and that recovery of significant damages would be particularly tricky as the facts of the case are very unusual.

In any event, I hope you understand a little more than you did before about this kind of thing. As always, questions or comments are welcome. If this sort of thing interests you, there are more post at my blog, Legal Inspiration!, and you are welcome to check me out on Twitter.

Thanks for reading!

Not So Cheerful About Varsity Brands (Crosspost)

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(Written for master trademark attorney Ron Coleman’s Likelihood Of Confusion® blog, crossposted with his gracious consent.)

So last Wednesday (March 22, 2017, if you’re joining us late) the Supreme Court of the United States issued its decision in Star Athletica, LLC v. Varsity Brands, Inc, et al

And a very small, highly specialized subset of LawTwitter went nuts.

Ron Coleman collected some great examples on his post Rah Rah Raw. (Trademark attorneys: Clever names on demand.) On the one hand, we have experienced copyright/fashion lawyers saying things like this:

On the other hand, we have intellectual property law professors saying things like this:


If it’s not clear, that was a response to the prior tweet. Or even things like this:


…when they really ought to know better. 140 character limit or not, that seems a bit over the top. But is it? Let’s review the decision.

First, a very brief summary of patent law vs. copyright law. Patents protect useful inventions. Copyrights protect artistic creations. In a sense, patents “trump” copyrights, in that you cannot use a copyright to protect a useful invention. (For instance, you cannot copyright the shape of an improved airplane propeller and claim nobody else can make a similar propeller. That’s what patents are for.) Patents are harder to get than copyrights, have much shorter terms, and cost a lot more both to obtain and to enforce. On the other hand, you can usually make a lot more money in a patent infringement suit than in a copyright infringement suit, there are fewer defenses to patent infringement than copyright infringement, and defenses to patent infringement are harder to raise.

Just to make things conf… I mean, interesting there are also what are known as design patents. These protect the “ornamental design of useful articles.” They are sort of a bizarre hybrid of patents and copyrights that have some of the worst (and best) features of both. They are outside the scope of the decision, but keep in mind that they exist when discussing this area of the law, if for no other reason than that “design” does not mean quite the same thing to a (design) patent lawyer that it does to a copyright lawyer, and I think that causes some of the confusion we are seeing.

Speaking of designs, in this context, designs are the key. Both parties in the Varsity Brands case make cheerleader uniforms, including non-team-specific uniforms with a variety of geometric designs on them. Here are examples:

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Those are uniforms for which Varsity Brands, Inc. (the original plaintiff, which is why I call the case Varsity Brands, hereafter “Varsity”) had registered copyrights. Star Athletica, LLC (hereafter, “Star”) made some competing uniforms which allegedly infringed said copyrights, and Varsity sued Star for copyright infringement.

Please allow me first and foremost to direct your attention to Footnote 1 on Page 11 of the main opinion:

1We do not today hold that the surface decorations are copyrightable. We express no opinion on whether these works are sufficiently original to qualify for copyright protection, see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 358–359 (1991), or on whether any other prerequisite of a valid copyright has been satisfied.

Failure to read/understand/accept the text of that footnote is, in my opinion, behind most of the more sensational tweets/comments such as Professor Fromer’s supra. The assertion that you can now slap a copyrighted design on any old thing and claim the thing itself enjoys the protection of copyright meets its first and highest hurdle in the fact that the design must in and of itself be copyrightable. The opinion is not addressing the question of copyrightability of the underlying design. (I myself, though not familiar with the particulars of the registrations, find them somewhat dubious in that regard.) It is assuming arguendo that the design is copyrighted, and resolving an old and complex circuit split on the legal ramifications of attaching a copyrighted design to a useful article.

And yes, there was a complex split. I have seen people claiming as many as six different tests existed for determining when useful article limitation overcame copyright protection. Many of them considered, to some degree, how functional the article was as an independent factor. And this is not a new idea. It is an old principle, recently re-affirmed in TrafFix Devices, Inc. v. Marketing_Displays, Inc. that you cannot use trade dress to create “perpetual patents.” Similarly, in Kohler Co. v. Moen, Incorporated the same rule was applied to trademarks. All of the tests attempting to do the same with copyright were created by intelligent judges and it is not my intent to dismiss or belittle them.

But I think that Occam’s Razor (the original, not the newfangled version) is very relevant here: “Do not multiply entities beyond necessity.” The intent of copyrights is to protect artistic works (henceforth I will not call them “designs.”) Using functionality as an independent test, in the case of artistic works applied to useful articles, is adding an unnecessary entity. And asking questions about intent versus perception or relative economic factors, as some of the tests did, is definitely adding unnecessary entities.

As a simple example, Justice Breyer’s dissent wants to apply a somewhat different approach:

Can we extract those features as copyrightable design works standing alone, without bringing along, via picture or design, the dresses of which they constitute a part? (Dissent, page 10.)

However, as the main opinion points out, not only does this lead to implausible results (You can’t copyright a square canvas: does this mean any painting made on one can’t be copyrighted?) but it imposes a requirement not found in the Copyright Act. As the first paragraph of the syllabus says:

The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U. S. C. §101.

There are two “entities,” if you will:

  1. Can you identify the artistic work separately?
  2. Can it exist independently of the useful article?

In Varsity Brands, the answer to both questions is clearly yes. The artistic work is the pattern of lines and figures. We could, with a really sharp knife, take the top layer of fabric off and create an independent work without destroying or limiting the usefulness of the underlying article in any way. How artistic it would be is a separate question, but if this:

…is a prized exhibit of one of the world’s great art galleries, who are we to say that Varsity’s works are unworthy of a little protection?

In any event, Justice Breyer’s proposed test, just like all the other tests, includes new entities which are neither necessary nor present in the statute. The test set forth in the opinion puts the burden exactly where the statute set it all along, and just as importantly, where the underlying principle of copyright protection would reasonably set it: on the independent existence and originality of the artistic work. Once they are established the “canvas” upon which artistic work rests, be it an actual canvas, a t-shirt, or a cheerleading uniform, matters not.

So what does all this mean to practitioners on the ground?

Going forward, this test will put a lot more emphasis back on the fundamentals of copyrightability and the doctrines governing it. Copyrightability is a mixed question of fact and law, heavily fact-dependent. Principles of copyrightability determination such as scènes à faire, the merger doctrine, and even the basic requirement of minimal artistic creativity set forth in Feist are untouched by the decision. These principles will form the basis for defense of copyright infringement allegations involving useful articles, rather than elaborate and circuit-dependent tests regarding how the functionality affects the copyright protection afforded the copyright owner.

Likewise, when the useful article itself is ornamental, preemption by the principles of design patent law will still come into play. If the ornamental design and the useful object are irretrievably combined, only design patent protection will be available. And that distinction will still be available as a defense to any claim of copyright infringement in the article as a whole.

For an example of how that could apply to fashion, consider the work of Tomoko Nakamichi:

In the case of clothing such as that made by Ms. Nakamichi, the artistic work is usually not going to be any individual decoration, but rather the article of clothing as a whole. If you remove the “artistic” parts, there is almost nothing useful left. Part of that is the non-two-dimensional nature of the artistic work. You will note that the Varsity Brands opinion talks a lot about applying two and three-dimensional artworks to useful articles. But here the subcomponents are mechanically integrated into the article itself, and removing them would cause the article to be less useful. Distinctions like this will become more important with the alternative tests that existed before Varsity Brands no longer available.

Relatedly, copyright law has an extensive body of doctrine as to how much of a copyrighted artwork must be copied to create an infringement and how much modification an alleged infringer must perform before the alleged infringing work is no longer a copy or an infringing derivative work. Those principles still apply, full force, to any allegation of copyright infringement related to a useful article under Varsity Brands. Along with standard copyrightability defenses and patent/design patent preemption, these provide accused infringers substantial protection from the tsunami of liability some commenters are predicting in the wake of Varsity Brands.

I hope you found this post educational. Even more importantly, to the extent you may have been worried about a sudden surge in potential liability on behalf of creators I hope it has reassured you somewhat. If readers have any questions or comments, I would be delighted to hear them. Thanks for reading!

A Tangent-Free Checklist For Electronically Copyrighting Ebooks.

NOTE: I am an attorney, but nothing in this article should be read as specific legal advice. While the information in this article is accurate to the best of the author’s knowledge and belief at the time of publication, laws and regulations change frequently and individual circumstances vary. Please consult an attorney licensed in your jurisdiction and familiar with the relevant law before making legal decisions.

There are many articles and books on how to file copyright registrations. However, most of them seem to go into a lot of unnecessary depth and/or off on extended explanatory or historical tangents. Which is understandable: Copyright law is pretty complicated, and it’s also very interesting to the sort of person who writes such books and articles. I am the king of unnecessary depth and going off on tangents, and I am casting no aspersions.

But, I thought it might be nice to have a really simple, streamlined checklist for copyrighting an e-book comprising original authorship. So here it is. If you follow these steps, you should be able to easily file a copyright registration for a single work of written fiction or nonfiction written solely by you.

Do not use this list for ANYTHING other than a single work of written fiction or nonfiction written solely by you! (Scripts, by the way, are not works of written fiction or nonfiction for purposes of the copyright law – they are “dramatic works.” If you’re registering a script, this list is not appropriate.) Also, if the work has previously been published in print or in some other work, you should not use this list.

All caveats herein notwithstanding, the Copyright Office’s website is reasonably easy to use, and a person of reasonable intelligence can most likely figure out how to register most kinds of works with the instructions on the site and possibly a little Googling. I am not trying to dissuade such persons. I am only saying that the second you diverge from the parameters I set forth, you can no longer just follow the steps below as I lay them out.

Okay, here we go!

Read The Rest

In Which I Review My Own Book For Potential Legal Issues.

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So, first, to get it over with: I wrote a book. It’s called My Mother Had Me Tested! and it’s a collection of funny mad science/geek-related short stories. Please have a look. If you think you might enjoy it, please read the free sample. If you still think you might enjoy it, please buy it. Here’s the link: http://amzn.com/B00WFV3YZU

Okay? Okay.

Now that the plug is done – and I would never suggest that you should buy my book to make the rest of this post easier to follow, no way, not for a minute – I’m going to go over some of the potential legal issues involved with the publication of my book, My Mother Had Me Tested!. (Okay, I’ll stop now. From here on out it’s just MMHMT, and no more links. Promise. :) )

Also, please keep in mind that nothing in this post is intended to be legal advice. I am reviewing my own work and pointing out generally interesting issues regarding it. My goal is not to provide specific answers to legal questions, but show examples of how one might approach these issues, and help you to be more aware of the potential for liability which your own creative endeavors might create. Always consult an attorney licensed in your jurisdiction and familiar with the relevant law *ahem* before making legal decisions.

Okay? Okay.

On with the review!

ISSUE ONE: COVER ELEMENTS

This one’s easy. I licensed the cover illustration from an online stock photo company called CanStockPhoto. They have a required copyright disclaimer: I included it. The font I used I found online and, after review, I decided that my usage of it for this purpose was acceptable. (Digital font files, by the way, can be copyrighted. Generally speaking, type itself cannot.) There’s no visible person, actual or not, so I don’t have to worry about a likeness release. (More about use of likeness below.) If there were, I’d need one or need to make sure the person I licensed the photo from had one. Stock Photo sites usually make this clear – if it’s marked “editorial,” you probably shouldn’t use it for commercial purposes. If it’s not, it’s probably released, but you should still check. If you commission a cover photo or illustration, make sure your artist provides a likeness release as well as a copyright license if necessary.

Finally, I made the cover myself, so I didn’t have to worry about the copyright on the assembled elements. If I’d had an artist do it for me, I’d have needed a copyright license, but I didn’t, so I didn’t. Next question!

Read The Rest

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