I moderated my first Anime Central panel yesterday. It was a variant on a panel I’ve done before, which I call “GeekLaw: Law, Pop Culture and Creativity.” I managed to spend most of the day at the con, so I thought a little recap might be fun. Please note that if you were at the panel and you’re looking for the presentation materials, here they are:
I arrived about 11AM and it was touch and go whether I’d even get a parking space. The convention center’s lot was so full it was blocked off already. Fortunately the Hyatt still had a few spaces (the convention is held at the Rosemont Convention Center, which is physically attached to the Hyatt hotel.) Unfortunately, that lot costs a lot more, but you gotta do what you gotta do.
But at least I found a space and was able to make the first panel that had caught my eye, “Scum & Villainy: Why It’s Good to be Bad.” I was under the impression this would be a how-to panel, but it turned out to be how to write about villains. Which was obviously disappointing but it was still a fun panel.
After that I went through Artist’s Alley, which was much better laid out this year than last year – one aisle was still a little tight, but you could get by. I picked up a cute little sketch zine from Lisa Imas (http://hashtag-art.tumblr.com/) called “things i drew when i should have been paying attention, or how i almost failed all my classes.) I got this because it reminded me of the time I almost got thrown out of a class in law school for laughing at the book I was reading when I was supposed to be paying attention. 🙂 I also encountered this retro cosplay:
The next panel I went to was a fan fiction panel. As I sometimes do when fan fiction is discussed, I went to the moderator before the panel and mentioned that I was an intellectual property attorney and that if any questions about legal issues came up, they were welcome to call on me if they didn’t have their own legal expertise.
I’m sure you can tell what happened next.
The question did come up, and the moderator very graciously invited me to stand up and borrow a microphone and talk for a few minutes about the legal issues related to fan fiction. It seemed to be very well received and people commented that it was helpful. I also plugged my own panel, which wasn’t for hours yet but it seemed only fair. So thank you to moderator Pearson Mui (http://www.jurai.net/~pmui/adintro.html) for asking me to speak.
With some time to kill, I headed back to the show floor and scoped out some cheap manga books, as well as running into these two:
In one of the cleverest (and most adorable) mashup cosplays I have seen in a long time, that’s Sailor Ladybug and Tuxedo Noir. (That’s what I call them, anyway.) I had to leave before seeing quite all of the floor because I wanted to attend a panel called “Copyright 101,” put on by Kumate Works. I admit that I went to this to see if the information being presented was reasonable, because while I try not to be obnoxious about it, if I see a presenter giving information that will get somebody sued, I will say something. However, my concerns were completely unnecessary. The presenter knew her stuff and had consulted with an intellectual property attorney to develop her presentation. It was excellent. Once again, I got outed, but once she knew I was an IP attorney I kept my yap shut unless she asked me for confirmation of something. I was very impressed.
Then I had to bolt around the panel room area to get to a paneled identified as “Game Development – The Crash Course.” It was put on by Mark Kakareka of Guilty10Games. Promising to be a “crash course” in the basics of game development, the panel delivered quite well in my opinion. Acknowledging that he couldn’t teach anything of practical substance in 45 minutes, the presenter instead hit the big picture elements – have a plan, write it down, do a design doc, use tools appropriate to your technical skill level – and provided some examples of each. I thought it was about as much as you could ask from a one-hour panel on a topic that you can literally get college degrees in. I got made again when somebody asked a legal question and I volunteered to answer it, but once more I apparently wasn’t too obnoxious and nobody seemed to mind my assistance.
I thought about going to another panel but the show floor had just closed and there were huge lines to pretty much everything, so I took a little break. When it got close to time, I went to the panel room I was in only to find that the panel going on in it was being run by a person I follow on Twitter, @Homura_Bakura. Her enthusiasm and happiness to be talking about something very dear to her was really amazing and while I did come in toward the end, everybody was obviously super happy to be there, so well done. After saying hi while she was on the way out I got set up for the panel.
I was stunned to see that even though we were doing a law education panel at 10:30 on a Saturday night, there were about thirty people waiting to come in. Thank you so much to everyone who chose to use part of their Con Saturday night to be with us! Thanks also to my fantastic co-panelists Sam Castree (http://www.twitter.com/indiegamelawyer) and Diana Qiao (http://www.twitter.com/dianaqiao.) The panel went great, we had wonderful questions, and everybody put up with my rambling far better than I could have expected. (It was a long day.)
Then I went home and passed out.
So thank you again, everybody, and hopefully I’ll see you again soon!
As ever and always: I am a lawyer, but I am (probably) not your lawyer, and this is not legal advice. This is a developing and complex area of the law. Do not, I repeat DO NOT, rely on anything in this post when making legal decisions. If you have a legal question, retain a lawyer licensed in your jurisdiction and familiar with the relevant law to help you.
If someone posts content online, and you want to incorporate it into your own online work, you have three options:
- You can link to it, like this: EFF Tweet on Goldman v. Breitbart or like this: https://twitter.com/EFF/status/964336727572779009 . The link can be active (the first one) or inactive (the second one, which you have to copy and paste or retype into your browser address bar.)
- You can copy/paste, retype, screencap, or some other way copy the content and repost it on your own server, such as a blog host server. Like this:
- You can embed the content in your own post, such that when people read your post (like this blog post) there is a line of code that tells their browser, “go to the original creator’s site and get this content, and display it as part of my post.” Like this:
Have you ever embedded someone else’s tweet on your website? A judge just said that you could be liable for copyright infringement. https://t.co/Lgw3rTI55O
— EFF (@EFF) February 16, 2018
Now obviously when you use someone else’s content, you open yourself to accusations of copyright infringement. And since the basic definitions of what constitutes copyright infringement in US law were set forth in a law passed in 1976, the law doesn’t always reflect modern technology or understanding of that technology. So people of good will can differ on these questions.
Look at the examples in #2 and #3 above. Ask yourself these questions:
- Do you see a significant difference? (Other than size.)
- More importantly, is there any significant difference in the visual experience they provide or the information you absorb when you look at one versus looking at the other?
- If you saw them in a news article or a blog post, would you be able to tell which sort of method was used to include the content without investigating further?
- Finally, do you see a significant difference between the examples in #1 and the examples in #2 and #3?
I think most people, answering honestly, would say that the answers are 1) no, 2) no, 3) no, and 4) yes. And therein lies the problem. We have extensive court precedent that says that #1 is not copyright infringement even though it provides information on where to access copyrighted content. This is true even if the person who is hosting the content may be infringing the copyright, and even if the person who posted the link knows the person who is hosting the content may be infringing the copyright. Because a link is not content. You could argue that it’s not fair that the link-poster benefits from the secondhand use of the content, but it’s entirely rational to say that the link is not the work and so there is a discontinuity that separates posting the link from posting the work.
(Edited to Add: Claiming that linking and embedding are the same thing, to paraphrase something I said on Twitter, is like claiming that a book with a picture of the Mona Lisa in it and a piece of paper with a list of written directions on how to go to the location in the library where it is shelved are the same thing. The map is not the territory. But a picture of the map is, for purposes of copyright, the map.)
The question of whether #2 and #3 are copyright infringement has been litigated, but we have only one significant, on-point court of appeals case on the question, in which the Ninth Circuit Court of Appeals found that #2 is, and created the (for once) desciptively-named “Server Test.” Specifically, if the content is hosted on your server, you may be infringing copyright. If it is not, you probably aren’t. This has the benefits of being simple, straightforward, and very easy to determine. (Though obviously as always there are edge cases.)
The Copyright Act gives copyright holders five fundamental rights:
- The Right of Reproduction – the right to make copies of the work.
- The Right of Adaptation – the right to adapt the work to other uses (i.e. to make “derivative works.”)
- The Right of Publication – the right to distribute copies of the work to the public.
- The Right of Performance – the right to perform the work in public, in a fashion which does not create or distribute copies.
- The Right of Display – the right to make a copy of the work available to the public without distributing it, copying, or performing it.
As the Ninth Circuit is very influential in technology jurisprudence (it’s the circuit that includes California/Silicon Valley) and copyright litigation is SUPER expensive, up until now many people had sort of gone along with the idea that the Server Test was cool because hey, if you didn’t put it on your server, you didn’t create a copy, and it says “copy” right there in the name of the right, right? (I am not as ashamed as I should be of that sentence.) And as displaying a web page causes the user’s web browser to download and create a local copy of the content of the page, obviously it wouldn’t make sense to claim that such a transient “copy” was offensive in the eyes of the law. And it was good. Or, at least, most people had better things to worry about.
Then this case came down: Goldman v. Breitbart.
The judge in this case, whose court is not in the Ninth Circuit and therefore is not bound to follow the Ninth Circuit Court of Appeals’ decisions as a matter of law, found the reasoning behind the Server Test unpersuasive when it came to embedding (the #3 example of reposting types from way up at the top there) because of the fifth right – the right to display.
Her logic – and you should read the case for yourself, it is in my opinion technically accurate and logically and legally sound – is that while we may have to let the local user create a temporary copy to view a web page, that doesn’t give the creators of web pages an automatic out. In other words, “because Twitter” is not a defense to a claim of copyright infringement recognized by the Copyright Act.
The Copyright Act – and I’m not going to go into detail on this because the opinion does a great job – in its plain language, history and purpose, was designed to anticipate that new technologies would become available and that ultimately, absent a Fair Use defense, the purpose of copyright is to protect the rights of the creators of content. If there is no practical difference, regarding the rights of the user and the ultimate effect of #2 versus #3, then there is no legal difference. If #2 is copyright infringement, the judge’s logic goes, so is #3.
So according to the judge in Goldman, the answer to our headline question is “No.” (Trick question: if a headline asks a question, the answer is usually no.) Does that mean you can’t embed tweets without fear of the Copyright Police knocking down your door in the dead of night and carrying you off to work in the Associated Press’s content mines forever? Also no. First of all, there are no Copyright Police. (Though that might be interesting.) Secondly, all this decision does is make clear, as I said, that “because Twitter” is not a legal defense to copyright infringement. All of the other defenses to copyright infringement, including Fair Use *shudder* and factors which make a use non-infringing in the first place, remain viable and in full force and effect.
Given that, what is the impact of this decision on media creators, up to and including your humble blogger? (Assuming that this travesty of a case isn’t immediately overturned on appeal as many in the industry righteously assure me it will be, that is?)
Simple. Don’t try to use “because Twitter” as a rationalization for reposting content you wouldn’t have reposted if it weren’t on Twitter. Or Instagram, or Tumblr, or whatever. If you want to cite a tweet or other analgous post, but are’t sure you should repost the associated media, copy/paste and attribute the text. If somebody posts a picture on Twitter, et cetera, and you want to repost it, ask for permission. Same for any other content you could embed in such a way that a reasonable person couldn’t tell if it were embedded or directly included in your own content. In other words, stop thinking the Internet is different. It isn’t.
Note: that doesn’t go for retweeting or quote-tweeting on Twitter itself, as Twitter’s terms of service require users to allow other users to retweet and quote-tweet original tweets. This is, by and large, true of other analogous services like Instagram and Tumblr, but your mileage may vary.
As always, thank you for reading. Questions are welcome in the comments or on my Twitter feed.
Most People Are Fuzzy On IP: An Intellectual Property Primer
Written as a guest post for Lawyers and Liquor, hosted by the inimitable Boozy Barrister. If you have comments, please consider posting them on the original post, here: http://www.lawyersandliquor.com/2018/01/guest-post-most-people-are-fuzzy-on-ip-an-intellectual-property-primer/
I’m Marc Whipple, an intellectual property attorney. I blog at Legal Inspiration and you can find me on Twitter as LegalInspire. I’m licensed to practice law in the state of Illinois and I am a registered patent attorney, which means I can appear before the United States Patent and Trademark Office on behalf of inventors wishing to file patent applications. I’ve been practicing law for over twenty years and I like to think I’m starting to get the hang of it. That said, I am a lawyer, but I am not your lawyer. Nothing in this post constitutes legal advice. Questions in the comments (or by other means) are welcome but like any lawyer I will not give specific legal advice to people who are not my clients. Okay? Okay.
The gracious host of Lawyers and Liquor asked me if I could walk his readers through the basics of “intellectual property” law, which is, in general, the law of patents, copyrights, and trademarks. These matters are relevant to, well, pretty much everything you do, especially if you’re part of this Internet thing. And most people are a little fuzzy on them. But fear not! I am an expert on fuzzy subjects. In fact, my first patent was for a fuzzy subject. (I am completely serious: https://patents.google.com/patent/US5735521A/en.) So let’s see if we can keep this from turning into a complete furball, shall we?
First of all, if you want to see some fancy-schmancy PowerPoint presentations on the topic, you can look at this post on my blog. If you prefer your information imparted by helpful robots, you can look at this one. But for now let’s just hit the basics.
First: Intellectual property, unlike real property (i.e. land) or personal property (e.g. your computer) consists of a bundle of rights which are not tied to any physical object. They can control what you can and can’t do with physical objects, but they are independent of the objects. So if you have a drawing that you had somebody else make for you, what you have is a drawing. The copyright in that drawing does not necessarily belong to you, even if it’s the only copy, even if you paid the artist to draw it, even if you told them what to draw. The same is true of patentable inventions, etc. I know this is a strange idea, but please remember it. (If strange ideas bother you, I’m not sure how you ended up here in the first place, but that’s not important now.) Furthermore these rights are all negative. That is, all intellectual property rights do is give the holder the right to tell someone else they can’t do something. They do not give anybody the right, or the obligation, to do anything.
Second: For practical purposes, the three main types of intellectual property (patents, copyrights, trademarks) have nothing to do with each other. A trademark is not a copyright is not a patent. If a particular product is patented, contains copyrighted subject matter, and is sold in association with a trademark, the patent, the copyright, and the trademark could all be owned by different people or entities. Or there could be multiple patents, copyrights, and trademarks associated with any given product, all owned by different people. This gets complicated fast. So never assume that because you (think) you know something about a copyright associated with something, that you know anything about its trademark status, etc.
Third: For the most part, intellectual property does not cross national boundaries. A US patent cannot be enforced in China, a Canadian trademark cannot be enforced in Mexico. HOWEVER, he said in bold italic underlined all-caps, in many cases is not difficult to use intellectual property valid in one country to obtain similar rights in another country. And if you are infringing in such a way that people from a country where the the rights are valid are harmed, you may be reached by the holder of the rights even if you are not in such a country. Here there be monsters.
Okay, now that that’s clear (Ha!) let’s talk about three different kinds of intellectual property, or “IP” for short (insert Bart Simpson phone call joke here.)
A patent is the exclusive right to practice an invention. An invention is a novel and unobvious improvement upon the prior art in the field of the invention. In the US, any “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” is patentable, and can be protected by what is called a “utility patent.” (Most other countries have similar legal provisions.) The other kinds of patents are “design patents,” about which more later, and “plant patents,” regarding which deponent sayeth not. Unless otherwise specified, “patent” usually means “utility patent.”
The important thing about patents is that to get one, your invention must be novel and not obvious. Novel just means that no substantially similar machine, etc, can already be known to the public. You can’t patent something we already know about. The reason for this is that a patent is essentially a reward from society: the fundamental principle is, “Teach us how to do something we didn’t know how to do before, and we will give you a monopoly on it for a limited time.” There’s no benefit to society from telling us how to do something if we already know how to do it, so no patent for you.
“Obvious” is a word that just doesn’t mean the same thing to a patent lawyer that it does to a normal person. It does NOT mean that your invention isn’t clever, or that it wasn’t hard to come up with, or that it’s not a a huge improvement on the way things are usually done. The best way I know of to explain when something is “obvious” for patent purposes is to put it like this: If a person of ordinary skill in the relevant art knew every relevant public reference in the history of the world, would it be trivial for them to combine some of those references and arrive at your invention? If so, it’s obvious. If it’s obvious, we already know how to do it. No patent for you.
Once you obtain a patent, which is an expensive, complex and perilous journey, as I said you have the exclusive right to practice it. Which means that anybody else who does practice it is infringing your patent and you can sue them for damages and get an order from a court to make them stop. It doesn’t mean you have to practice it: you can stash it under your bed for the patent’s twenty-year term if you want.
It also doesn’t mean you have to stop others from practicing it. If you want you can release it into the public domain. You can simply ignore infringers. Whatevs. Many companies and organizations stockpile what are called “defensive patents,” which are patents they don’t intend to enforce, but obtained simply to keep others from doing so and/or so that they would have ammunition for a counter-suit if they themselves were sued for infringing similar patents.
Similarly, there are no Patent Police. (Nor Copyright Police, nor Trademark Police.) The only person who can do anything about patent infringement is the patent holder. This is an important IP general principle: if the holder of the IP doesn’t know about an infringement, or doesn’t care to do anything about it, that’s that. That might not be smart (especially for trademarks, see below) but it is absolutely and always the case. (Except for consumer protection matters, which are outside the scope of this post.)
I should also say two words about design patents, which are weird hybrids of copyright and patent. If you want more details, you can read this post. But in general, a design patent is a patent on the ornamental design of a useful object. For instance, one could obtain a design patent on the unique design of a costume, even if one couldn’t patent the costume itself because we all know about costumes already, buster. Anybody who wants to make a costume can still make a costume, but that can’t make THAT costume during the design patent’s fifteen year term because of course they have different terms from regular patents. They still have to be novel and non-obvious, kinda sorta, but it’s much easier and cheaper to get them.
A copyright is the exclusive right to distribute and use original creative works. Again, these are essentially rewards from society: “Publish your art so that we can benefit from it, and in exchange we will give you a monopoly on it for a limited time.” The bar for getting a copyright is much lower than the one for patents: the work must simply be original. In the US and most other countries, copyright attaches to a work as soon as it is reduced to “tangible form.” This includes bits on a hard drive, by the way. The US is somewhat unusual in that to actually enforce a copyright, the copyright has to be registered with the US Copyright Office, which is part of the Library of Congress, because of course it is. But the copyright itself exists the moment the work is created.
Unlike patents, it is entirely possible for multiple people to have copyrights in substantially similar works so long as they didn’t copy them. (This is called “parallel development” or “independent re-creation.”) So if I draw a picture of a badger, and you draw a picture of a badger, even if they’re nearly identical we both have good copyrights as long as I can’t prove you copied my picture.
Once you have a copyright, you have the exclusive right to use, publish, copy, and distribute the copyrighted work. This includes making derivative works (works based on or incorporating the copyrighted work) which are not transformative enough to qualify as new and independent works. Once you sell an authorized copy, under most circumstances a legal principle called the First Sale Doctrine means that you can’t control what the rightful owner does with the physical copy they lawfully possess. However, it doesn’t mean they can create new derivative works with it, unless that was part of the license when you sold the copy. (Spoiler: It probably wasn’t.)
Unlike patents (mostly) there are circumstances where other people are allowed to use your copyrighted works even without your permission. The most common and most often misunderstood of these is the Fair Use Defense. Before I even get into what makes a Fair Use Defense, I want you to notice that last word, defense. When you allege a Fair Use, what you are doing is saying, “Yes, I did infringe your copyright, but it’s a Fair Use so I’m allowed.” In other words, you are admitting that you infringed. This is fraught with peril. If your Fair Use Defense fails, you are screwed. This is not a good position to be in. So please consider this before using something just because you think you have a Fair Use Defense.
If you want the details of Fair Use, you can read this post. In summary, there are four factors, plus the Zeroth Factor, which determine whether a use is a Fair Use. They have to do with the relative harm the use does to the copyright holder’s rights and how strong they were in the first place. If you don’t want to read the linked post, please at least remember this: “I didn’t charge,” and “I gave them credit” do not constitute a Fair Use. Period.
Trademarks are things which function to indicate the source of a good or service in the marketplace. In a sense, trademarks are more about consumer protection than they are about the rights of the individual mark holders. Unlike patents and copyrights, trademark rights are related to the way other people see the property: if the market associates your mark with your goods and services, you can exclude others from using confusingly similar marks in association with similar goods and services. If it doesn’t, you can’t. Even the term is different: patents and copyrights have limited terms (on the order of 20 years for patents, and on the order of 100 years for copyrights.) Trademarks remain effective as long as the holder uses them and they maintain their association in the mind of the marketplace: when either of those things stops, so does the term of the trademark. (Although not RIGHT THAT INSTANT.)
Trademarks are usually words, short phrases, or logos, but anything which can reasonably form an association with a good or service can be a trademark, including a color, a series of musical notes, or possibly even a scent. As long as the association can be shown, it can be argued that a trademark exists.
It should also be noted that consumers don’t have to know what the ultimate source of the goods and services are, only that the mark indicates a consistent source. “Budweiser” brand beer is brewed by Anheuser-Busch InBev SA/NV, a Belgian transnational beverage and brewing company. Anybody who drinks beer knows what Budweiser beer is like. Some of them may know it’s brewed by a company called something like “Anheuser-Busch.” Very few of them probably know it’s brewed by a giant Belgian conglomerate, especially since they try so hard to play up its American origins. Doesn’t matter. So long as people can reasonably rely on getting the same beer-sperience every time they drink a beer labeled “Budweiser,” “Budweiser” is the trademark for that beer.
As is probably obvious, trademarks are infringed when someone uses the trademark, or something confusingly similar to it, to market similar goods and services. There is a concept called “dilution,” “blurring,” or “tarnishment” that can make this a little muddy: the holders of famous marks can sometimes argue that use of the marks even for different goods and services would be unfair to consumers and/or diminish the value of the brand. Anheuser-Busch InBev doesn’t make cars (that I know of,) yet if you tried to sell Budweiser brand automobiles, they might have something to say about it. And even if they didn’t win, they could make you ring up enough legal fees to make you sorry you tried. So don’t do that.
Other than famous marks, the only time you have to worry about infringing trademarks is if you could cause confusion in the marketplace. So if you make it reasonably clear that your use is not associated with the brand, you’re fine. Of course that sounds simple in theory but in practice arguments about what constitutes a likelihood of confusion have put a whole lot of lawyer’s kids through college. If you have questions about what constitutes a non-confusing use, you should ask a trademark attorney.
Trademark holders are notoriously vicious about protecting the value of their marks: that’s because, as we learned earlier, they only have value if the association is maintained. So they will often react very aggressively to even the possibility that someone is infringing their marks in a way that might weaken them. Losing an association is called “genericization,” and it is the death of trademarks. When a term becomes generic for a type of good or service, it can’t be a trademark. For example, “xeroxing” becoming the generic term for photocopying. If the public associates “xerox” with all photocopiers, Xerox Corporation can’t claim a unique association with their photocopiers.
For the same reason, you can’t register generic words as trademarks in the first place: allowing you the exclusive use of the word “egg” to sell eggs would unfairly disadvantage all other competitors, so you can’t claim a trademark for Egg brand eggs. There is a whole continuum of trademark strength from “generic,” which can’t be used, to “descriptive,” to “suggestive,” to “fanciful,” to “arbitrary.” The further down that list you are, the stronger your mark.
4) Trade Secrets, Et Cetera
Frankly, trade secrets are beyond the scope of this post, but they are often referred to as a fourth main type of IP, so I thought I’d mention them. Trade Secrets are just that – secrets that are valuable in trade. In other words, if information provides a competitive advantage if and only if it is kept secret, it could be a trade secret and therefore protectable by law. Disclosing trade secrets when you have an obligation not to do it can get you sued and, in extreme cases, arrested. The purpose of non-disclosure agreements, commercially, is to protect trade secrets. Once a trade secret is disclosed, it becomes worthless, at least legally.
This is why you can never, EVER have a trade secret that is protected by patent, copyright, or trademark: you have to disclose inventions and artistic works to get a patent or a copyright, and if the public doesn’t know about your mark, it can’t be a trademark because no association can possibly form. Trade secrets can be used to protect the way you make products associated with trademarks: the best example is the “Eleven Herbs and Spices” which go into Kentucky Fried Chicken’s original recipe. If nobody knows how it’s made, the making process is a trade secret even if everybody knows about the end result.
There are other legal concepts which might be bundled under “IP law,” for instance “trade dress,” which is related to, but not the same as, a trademark. Or “Moral Rights,” which are mainly important in Europe and other places full of Commies, but which have rough equivalents in US law. But these are the basics. I hope you found this post helpful (or at least interesting.) Questions are welcome either in the comments, on Twitter, or by email.
Thanks for reading!
(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:
- Developer posts Notice on their website that anybody who wants to can stream or post videos of people playing their games.
- NetPersonality posts a vid wherein they are playing a game from Developer.
- NetPersonality does something Bad, which Developer does not like, totally unrelated to Developer’s game and the aforementioned vid.
- 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:
- 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.
- 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.
- 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!
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:
— Staci Riordan (@staciriordan) March 22, 2017
On the other hand, we have intellectual property law professors saying things like this:
Huh? The Court overturned decades of circuit court cases without comment and did away with a central & widely accepted feature of doctrine. https://t.co/Q9ypR3FSfz
— Chris Buccafusco (@cjbuccafusco) March 22, 2017
If it’s not clear, that was a response to the prior tweet. Or even things like this:
Everything is now copyrightable, even something patentable. Horrible day 4 copyright law w #SupremeCourt decision on cheerleading uniforms
— Jeanne Fromer (@JeanneFromer) March 22, 2017
…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:
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:
- Can you identify the artistic work separately?
- 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!