Guide Through the Legal Jungle

Gaylord v. US, Part Three, Where Copyright Provisions of Government Contract Fell Short

In Part One and Part Two of this blog series, I discussed the copyright fair use and copyright co-authorship aspects of the Gaylord v. U.S. case involving the Postal Service’s issuance of a Korean War Veterans Memorial stamp. In this final part of this three-part blog posting, I’ll discuss the government contracting aspect.

My only familiarity with this case is from my reading of the court decision. From that admittedly limited vantage point, it seems to me that the government could have avoided this situation if it had exercised more care in the drafting and oversight of the government contract with Cooper-Lecky, the general contractor for the Memorial. Instead, the government stepped on a landmine lurking in the copyright provisions of the contract.

The contract between the government and Cooper-Lecky gave the government broad rights in the Memorial including the right to use all elements of the Memorial on any other government design or construction. Such language should resolve the government’s problem with Gaylord’s copyright infringement lawsuit – except that Gaylord was not a party to the government-Cooper-Lecky contract. Cooper-Lecky granted the government all the rights Cooper-Lecky held in the Memorial. However, one cannot grant rights it doesn’t have and Cooper-Lecky evidently did not have sufficient rights in Gaylord’s work on the Column.

From the government’s perspective, Cooper-Lecky should have been contractually obligated to obtain in writing proper rights from everyone who worked on the Memorial project so that Cooper-Lecky could properly convey those rights and permissions to the government. Somewhere along the way, this process broke down. The court opinion suggests that Cooper-Lecky and Frank Gaylord did not start their working relationship with a written agreement addressing the copyright ownership of the Column. As a result, Gaylord and Cooper-Lecky disputed copyright ownership of the Column for years with those disputes finally culminating in a 1994 agreement in which Cooper-Lecky acknowledged Gaylord’s sole copyright ownership of the Column.

Gaylord v. US, Part Two, Government Is Not Co-Author of Government Commissioned War Memorial

In Part One of this blog series, I provided the background of the Gaylord v. U.S. decision. I also discussed the case’s fair use finding that the U.S. Postal Service’s issuance of a Korean War Veterans Memorial stamp was not a fair use.

In this Part Two, I’ll discuss the copyright co-authorship aspects of the case. As one of its defenses to Frank Gaylord’s lawsuit, the U.S. government claimed to be a co-author of the Column.

The Meaning of Copyright Co-Authorship

If the government qualified as a co author, it would have a right to use the Column without permission from Gaylord and there would be no infringement. You do not need a contract for the creation of a co-authorship relationship so it is possible to take on a co-author without the explicit intention of doing so. A copyrighted work qualifies as a joint work if it is a work prepared by two or more people with the intention that their contributions be merged into one inseparable work. As you might guess, the validity of a co-authorship claim is highly fact specific. The individual claiming to be a co-author must show independent copyrightable contributions and intent.

No Government Copyright Co-Authorship in Memorial

The government claimed its co-authorship through the primary contractor Cooper-Lecky and through the Korean War Veterans Memorial Advisory Board (VAB), and the Commission on Fine Arts, two government entities that worked on the Memorial. The court did not agree that the government was a co-author of the Column and found that Gaylord was the sole author of the soldier sculptures.

Instead, the court concluded that the government had merely provided Gaylord some direction and ideas which did not qualify as independent copyrightable contributions eligible for co-authorship status. For example, the VAB had suggested ethnicities and equipment to make the soldiers appear representative of those in the Korean War and Cooper-Lecky had suggested that Mr. Gaylord depict more youthful soldiers with less wind in their ponchos.

Furthermore, in a 1994 agreement with Gaylord, Cooper-Lecky acknowledged that Gaylord was the sole author of the Column of soldier sculptures.

Gaylord v. US, Part One, Korean War Veterans Memorial on Stamp Is Not Fair Use

On February 25, 2010, the United States Court of Appeals for the Federal Circuit, made a decision in the case of Gaylord v. United States. While many reports of the opinion focus on the copyright fair use determination, the court opinion also provides instructive analysis on what it takes to qualify as a co-owner of a copyright and potential pitfalls in the copyright provisions of government contracts.

This is the first of a three-part blog posting. In this first part, I discuss the Gaylord fair use analysis. In Parts Two and Three, I’ll discuss the copyright co-ownership and government contracting portions of Gaylord v. United States.

Background of the Dispute

In 1986, Congress enacted legislation to build the Korean War Veterans Memorial in Washington, D.C. Cooper-Lecky Architects, P.C. (Cooper-Lecky) was selected as the primary contractor for the Memorial. Cooper-Lecky selected Frank Gaylord, a nationally recognized sculptor, as the sculptor for the Memorial. Gaylord sculpted nineteen stainless steel statues representing a platoon of nineteen foot soldiers in formation referred to as The Column.

After completion of the Memorial, Photographer John Alli took several photographs of the Memorial including a photograph taken in January 1996 after a snowstorm that left the statues in the column covered with snow. In 2002, the U.S. Postal Service issued the stamp, titled “Korean War Veterans Memorial.” which features one of Mr. Alli’s photo and depicts fourteen of Gaylord’s nineteen soldier sculptures.

The Postal Service received over $17 million from the sale of nearly 48 million of the Korean War Veterans Memorial stamps. In addition, the Postal Service sold retail goods such as commemorative panels and framed art featuring images of the stamp. The Postal Service had the permission of Mr. Alli and Cooper-Lecky to use the image on the stamp. The Postal Service did not have the permission of Mr. Gaylord. Mr. Gaylord sued the Postal Service for copyright infringement.

Fair Use Analysis

One of the United States’ defenses to Mr. Gaylord’s lawsuit was fair use. The United States Court of Appeals for the Federal Circuit did not agree. Here is the court’s analysis when applying the copyright fair use four factor test:

Factor One. What are the purpose and character of the Postal Service’s use of Gaylord’s work? The Postal Service received millions of dollars from the sale of the stamp. The court classified the use as commercial. The court did not find the use of the Column to be transformative. Factor One weighs against fair use.

Factor Two. What is the nature of the copyrighted work? The nature of the Column is expressive and creative. Factor Two weighs against fair use.

Factor Three. How much of the copyrighted work is used? The stamp depicted fourteen of the nineteen soldier sculptures in the Column. Factor Three weighs against fair use.

Factor Four. Does the use harm the copyright owner’s ability to market the work? The court ruled that the stamp has not and will not adversely impact Mr. Gaylord’s efforts to market derivative works of the Column. Someone seeking to take a photograph of the Column or otherwise create a derivative work would not find the stamp to be a suitable substitute for the Column itself. Factor Four favors fair use.

Twilight Film Saga Provides Lesson on Unauthorized Documentary Dos and Donts

If you’re a fan of the Twilight books and films, you probably already know that the second Twilight movie, New Moon, will be available on dvd on March 20.

March 20 is also the scheduled release date for two related documentaries: The first is Twilight in Forks: The Saga of the Real Town. It is an “authorized” documentary to be released by Summit Entertainment, the company that produces the Twilight films. The second documentary, Forks: Bitten by Twilight, is to be released by Topics Entertainment, a large multimedia company that normally produces educational videos.

Summit is not thrilled by the “unauthorized” Topics documentary and has filed a lawsuit alleging false designation of origin, trademark infringement, trademark dilution, copyright infringement, and unfair competition.

Your Right to Make Documentary Productions about Popular Films and Books
Topics or anyone else can permissibly distribute a documentary offering commentary about a culturally popular phenomenon like the Twilight saga books and films. Under certain circumstances, the producer of such a documentary may even use excerpts from the books and films under the copyright fair use doctrine.

In this dispute, it’s not the content of the Topics’ Bitten by Twilight documentary that’s bothering Summit. It’s the dvd packaging that Topics plans to use. Summit claims Topics has designed the packaging to confuse consumers into thinking the “unauthorized” Bitten by Twilight documentary is actually authorized.

Topics Potential Wrong Turns
If you accept everything alleged in Summit’s complaint as true, Topics made a series of wrong turns and turned what could have been a completely legal documentary into a dvd project facing an injunction:

• The word “Twilight” on the dvd packaging mimics the very stylized format in which Twilight is written on the films, dvds and other Twilight merchandise.
  
  
• The Topics Bitten by Twilight dvd cover features a quote attributed to Stephenie Meyer, author of the Twilight books, that “. . . And there right where I wanted it to be, was a tiny town called ‘Forks.’” Summit alleges that Ms. Myers did not consent to use of the quote on the dvd cover.
  
  
• Topics is aggressively planning its release date to coincide with the dvd release of New Moon and the Summit Twilight in Forks documentary. This is not per se illegal but may suggest some bad faith on Topics’ part to confuse consumers.

How the Ellen DeGeneres Show Rolls – An Example of Song Licenses Versus Sound Recording Licenses

If you watch the Ellen DeGeneres Show, you know that popular music plays an important role in the daily talk show. Ellen regularly dances from one set to another after her opening monologue. It turns out that the Ellen DeGeneres Show has not properly licensed the music, according to a lawsuit initiated earlier this month by the major record labels.

The lawsuit is a good example of one’s obligations to license the song versus one’s obligations to license the sound recordings. I often refer to understanding the song-sound recording distinction as step number one to understanding the music business. The pending lawsuit is all about sound recordings.

Licenses in the Songs

The Ellen DeGeneres Show producers are not required to directly obtain licenses for use of the songs. This is because license fees owed for songs should be paid through the agreements the television stations that broadcast the Ellen DeGeneres Show have with the performing rights organizations – ASCAP, BMI and SESAC.

Licenses in the Sound Recordings

The show’s producers are responsible for getting licenses from labels if they want to use recordings. These are the licenses the producers have neglected to obtain. According to the complaint, when asked why they had failed to get licenses for the use of the sound recordings, the show’s representatives responded that they “did not roll that way”. Not the wisest response.

I predict a quick settlement with the Ellen DeGeneres Show paying license fees that are somewhat higher than fees they would have paid had they properly licensed the material.

Courtney Love’s Twitter Defamation Lawsuit

Dawn Simorangkir, aka Dawn Younger-Smith, aka Boudoir Queen is an up and coming fashion designer who was retained by singer Courtney Michelle Love. After becoming unhappy with their business relationship, Love posted some not-very-nice and profanity-filled online comments about Simorangkir.

Simorangkir has filed a lawsuit against Love for libel and related claims.

Why Is Everyone So Atwitter Over the Courtney Love Defamation Lawsuit

Everyone seems quite excited that this defamation action spawned from comments that Love posted on the popular social networking site Twitter. Evidently, the Love/Simorangkir lawsuit is the first defamation action connected to someone’s activities on the micro-blogging site. Note that Love also posted comments on MySpace and on Simorangkir’s etsy.com feedback page

Is This Defamation Lawsuit Really Special?

Outside of the use of Twitter, I would say this defamation lawsuit is not that special. However, it should serve as reminder that bad behavior is not immune from consequences just because the bad behavior takes place via the internet.

As a general review of how to avoid defaming people, you might want to listen to my recent One-Minute How-To – Challenge interview during which I gave a one-minute overview of How to Avoid Defaming People In Your Writing.

Is Courtney Love In Trouble?

Maybe. Much of Love’s internet musings are a rant which could be classified as Love’s statement of her opinion about Simorangkir or simply as name calling. Insults and name calling by themselves are normally not actionable as defamation.

However, within her rant, Love does make statements that a court might interpret as being offered as statements of fact. According to Simorangkir’s complaint, Love said Simorangkir sold drugs, is a drug addict, has a history of dealing cocaine, has a history of assault and burglary, has a record of prostitution, has committed grand theft, stole cash and goods from Love, has engaged in felonious behavior, lied, embezzled money, has committed blackmail, was deemed an unfit parent, lost custody of her child, is a racist and homophobe, has outstanding warrants for her arrest, and that the Austin police confiscated Love's property from her home.

If Love made such statements about Simorangkir and the statements are false, those are good grounds for a defamation claim.

American Apparel Could Have Predicted Woody Allen’s Right of Publicity Lawsuit

(Update: According to an article in the New York Times, the Allen vs. American Apparel lawsuit settled on the court room steps this morning for $5 Million.)

The trial for Woody Allen’s lawsuit against American Apparel is scheduled to start today, May 18, 2009, in New York.

Why is Woody Allen Upset?

American Apparel used still images of Woody Allen from the film Annie Hall on billboards located in New York City and Los Angeles and in internet advertisements. In the image, Allen is in full Hasidic Jewish attire and has a full mustache and beard. The billboard includes a Yiddish phrase translated to mean “The Holy Rebbe” and the words “American Apparel”.

American Apparel did not seek Allen’s permission prior to posting the billboards. As a result, Allen filed a lawsuit against American Apparel in the Southern District of New York federal court.

Allen’s lawsuit includes a claim under Sections 50 and 51 of the Civil Rights Law of the State of New York which allows you to sue someone who uses your name, portrait, picture or voice in New York for advertising purposes without your permission. The lawsuit also includes a claim under Section 43(a) of the Lanham Act which allows you to sue if someone falsely implies you endorse a product or service.

Is the Billboard a Commercial Use of Allen’s Persona

The outcome of the court battle will focus on whether American Apparel’s true intent behind the billboard was to advertise its goods or to parody Mr. Allen.

American Apparel CEO Dov Charney argues that the billboard did not have a commercial purpose and is a parody. At trial, he plans to explain how the use of the image from the Annie Hall film makes a social statement and addresses social issues. If the court accepts that argument, the American Apparel billboard could be deemed a permissible parody protected by the First Amendment – regardless of the lack of consent from Allen.

In its documents filed by the court, American Apparel says “It strains the imagination to identify what ‘commercial transaction’ is proposed . . . The images do not feature or refer to any of American Apparel’s products, and so do not offer anything for sale.”

Personally, I do not have to strain my imagination too much to see how a consumer could interpret the billboard as an advertisement. American Apparel is known for its avant-garde advertising style. I have certainly seen progressive commercial advertisements that do not prominently feature or mention the product or service they are advertising.

Not a Smart Move by American Apparel

Even if American Apparel meant for the billboard to be a non-commercial parody, plastering Woody Allen’s face on a billboard just isn’t a smart move for someone who doesn’t want to wile away many hours at the center of a litigation proceeding.

One of the top questions to ask yourself when evaluating the risk of using someone’s material or persona without permission is whether the person has previously objected to similar uses of his material. It is a good bet that someone who has been aggressive in protecting his rights in the past will continue to be aggressive in protecting his rights in the future.

Without even doing any research, I am aware of two lawsuits filed by Woody Allen relating to the unauthorized use of his images in a commercial context. There are probably more Allen lawsuits out there.

American Apparel is not a fledgling operation struggling to finance its “creativity” with personal loans and credit card debt. It is a publicly traded company with a cadre of experienced attorneys at its disposal. One conversation with his legal team should have told American Apparel CEO Dov Charney that Allen would not be a happy camper when he saw the billboards and that a lawsuit might be a consequence of the billboard campaign.

Similarities to the Naked Cowboy Case

The Allen case reminds me of the Naked Cowboy case about which I also blogged. Robert Burck, better known as the Naked Cowboy, is a street performer who sings while accompanying himself on a white guitar. He wears a white cowboy hat, white cowboy boots, white briefs, and nothing else.

Burck sued Mars, the company that manufactures M&M candy after it posted a Times Square billboard featuring an animated blue M&M playing a white guitar and wearing an outfit similar to Burck’s.

Like Allen’s current case, Burck’s case was also before the Southern District of New York federal court. And like Allen’s current case, Burck’s claims included a Section 50/51 right of publicity claim and a Lanham Act false endorsement claim.

Burck lost his right of publicity claim because Mars did not use an actual photograph or likeness of Burck. Instead, they dressed up an M&M like him. There’s no Section 50/51 protection for evoking aspects of a fictional character you play.

The court allowed Burck’s Lanham Act Section 43(a) false endorsement claim to continue. As part of that claim, Burck alleged that consumers seeing the advertisement might incorrectly conclude that Burck had endorsed M&M candy. According to the court, Burck’s allegation was plausible and merited a hearing at a trial.

Ultimately, Burck and Mars settled the lawsuit without a trial. The parties did not publicly disclose the terms of the settlement.

Family Guy Decision Emphasizes Right to Parody Copyrighted Works

A case decided earlier this month emphasized that parody frequently qualifies as a permissible use of a copyrighted work – even if some people find the parody tasteless and objectionable.

Family Guy Wishes Upon a Star

"When You Wish Upon a Star" is a song written by Ned Washington and Leigh Harline for the 1940 Disney movie Pinocchio. It won the Academy Award for best original song.

Family Guy is an animated television sitcom that centers on a dysfunctional family living in the fictional town of Quahog, Rhode Island. The show used a re-worked, parodied version of “When You Wish Upon a Star” in a November 2003 episode entitled "When You Wish Upon a Weinstein". The music publishing company for “Wish Upon a Star” sued Twentieth Century Fox Film Corp., Fox Broadcasting and the Cartoon Network for copyright infringement. A New York federal judge ruled the use to be a parody and dismissed the lawsuit.

Carol Burnett’s Challenge Against the Family Guy

The Wish Upon a Star rights holders didn’t learn from a similar case with a similar result involving Carol Burnett. Carol Burnett was upset when an episode of the Family Guy used her cleaning woman character and the theme song from the Carol Burnett Show. The Family Guy episode includes a scene in a porn shop in which an animated figure resembling the Carol Burnett-cleaning woman works as a janitor. A California federal court dismissed Burnett’s lawsuit finding that the Family Guy episode parodies Carol Burnett.

In making his ruling the judge did offer Ms. Burnet some words of comfort:

The Court fully appreciates how distasteful and offensive the [Family Guy] segment is to Ms. Burnett. . . . To some extent this dispute is indicative of just how far the “new media” has come from the “old media.” The old media harkens back to days when crude jokes and insensitive, often mean spirited, program[m]ing was perhaps found in live night club performances but was not present on television. In the new media, any self imposed restraint essentially has been eliminated. Public figures, such as Ms. Burnett, are frequent targets of parodies and crude innuendo. As Ms. Burnett well knows, it takes far more creative talent to create a character such as the “Charwoman” than to use such characters in a crude parody. Perhaps Ms. Burnett can take some solace in that fact.

However, the law, as it must in an open society, provides broad protection for the [Family Guy episode]. Therefore, the Court grants [Family Guy’s] . . . motion to dismiss [Carol Burnett]'s complaint

Lessons from Louis Vuitton on the Risk of Unauthorized Product Placements

With all the media attention on the settlement reached between Sean Combs/P. Diddy and Louis Vuitton, I thought this would be a good opportunity to blog about the potential risks of unauthorized product placements.

General Rule about Product Placements

Putting brand name products in your films and other creative products raises trademark questions. Several court rulings say the unauthorized appearance of a brand-name product in your production is okay as long as the appearance does not (i) tarnish the product’s reputation, (ii) draw on the goodwill associated with the product, or (iii) mislead people to believe that the product manufacturer has endorsed or sponsored the production.

However, even if you meet those standards, it doesn’t mean the trademark owner will not still initiate legal action against you if it views your treatment of its trademark as negative.

In the Sean Combs case . . .

Louis Vuitton objected to the appearance of its products and trademarks in videos and album art for Danity Kane, a group released through Combs’ Bad Boy Records label. As part of the settlement agreement, Combs agreed to remove all visual references to the Louis Vuitton trademarks from future releases of the videos and album

A Few Unknowns (at least to me) and Caveats about Louis Vuitton/Sean Combs Case:

• I have not seen the Danity Kane videos and album art so I can’t comment on the extent to which they feature Louis Vuitton products.
  
• The case was filed in France. I haven’t located a copy of the original complaint so thanks in advance to anyone who wants to forward me a copy or link. Anyway, I presume that the case would not have been decided under United States law.
  
• Since Combs decided it was more advantageous to settle, we won’t find out whether a court would have ruled that the use of the Louis Vuitton products was improper.

So while the Louis Vuitton-Sean Combs settlement is not authoritative, the lesson for creative types to take away is that using other people’s trademarks can carry consequences. While, in many circumstances, you may have a First Amendment right to use the trademark, you do want to consider the risks and perhaps seek legal guidance before incorporating trademarks into your music, films, domain names, and other creative endeavors.

Eminem Sues Label for Better Digital Download Royalties

Last week Eminem’s lawsuit against Universal Music Group went to trial. Eminem claims that Universal is underpaying royalties on digital downloads through third-party distributors such as iTunes.

Here’s the Issue. . .

Many record labels treat a music download like the sale of a physical CD which means that the record label pays the recording artist a royalty of about 12 to 16% of download revenue. Recording artists argue that a download is equivalent to a license meaning that the record label should split download income fifty -fifty with the recording artist.

Not the First Time

While this is the first time this issue has gone to trial, it is not the first time a recording artist has pursued the issue. The Allman Brothers Band and other recording artists pursued the issue in a New York federal court lawsuit against Sony BMG. The Allman Brothers-Sony BMG case did not make it to trial for consideration on the merits of the "is downloading more like a license or a physical product" questions. The Allman Brothers lost on technical contractual grounds.

The contract required them to object to royalty statements within two years from the date rendered and to commence a lawsuit with respect to any royalty statement within three years. The Allman Brothers lawsuit against Sony BMG did not comply with those deadlines and their suit against Sony BMG was dismissed. Refusing to let that first obstacle get them down, the Allman Brothers have another pending suit against UMG Recordings with similar royalty claims. The UMG lawsuit seeks payments from record sales from the group’s first label, Capricorn Records.