Guide Through the Legal Jungle

Protecting Your Recipes. What Culinary Professionals Want to Know.

Cookbook authors, food bloggers and recipe developers have many questions about protecting, sharing, and adapting recipes. In this blog post, I respond to the 28 questions submitted by culinary professionals during my recent webinar sponsored by the International Association of Culinary Professionals.

Potential methods of protecting recipes include copyright, trade secret, contract, and patent. My webinar comments and this blog posting focus on copyright which is the most utilized form of protection for recipe protection. (I briefly discuss potential recipe protection offered by trade secret, patent and contract law here.)

BASIC PRINCIPLES

Here is a summary of the key points I shared during the webinar, broken down into five principles. In the next section below, my responses to the questions will refer back to these five principles.

Principle One. Many Recipes Do Not Qualify for Copyright Protection. A recipe that simply lists ingredients and basic cooking directions is not protected by copyright law. That is because copyright law does not protect basic facts, procedures or processes. As an example, the following recipe is NOT protected by copyright.

Cranberry Gelatin Mold

Ingredients:

• 6-oz package of strawberry-flavored gelatin
• 8 ounces of crushed pineapple
• 12-ounce can of whole cranberries

Preparation Instructions:
Dissolve the gelatin in 2 ½ cups of boiling water. Add the pineapple and cranberries. After the mixture cools, transfer it to a bowl and chill in refrigerator until firm. If desired, garnish with whipped topping before serving.

A group of recipes (e.g., a cookbook, the entire content of a food blog) might qualify for copyright as a compilation even if the individual recipes do not qualify for protection on their own.

In contrast to the ingredient list and directions for cranberry gelatin mold above, a recipe that incorporates expressive elements might qualify for copyright protection. For a recipe, expressive elements might be suggestions for presentation, advice on wines, and information on the origin of the dish.

Principle Two. When Available, Copyright Protects Only the Text of the Recipe. Copyright protection of a recipe protects only the text. That means you cannot offer a verbatim or substantially similar copy of a copyright-protected recipe in your own cookbook or website without the copyright owner’s permission or without an applicable exception to copyright protection.

Principle Three. A Recipe that Is Not Copyright-Protected Can Be Copied with No Legal Copyright Consequences. Of Course, There Is a Caveat. If a recipe is not copyright-protected, anyone can duplicate the text of that recipe without violating any copyright laws. However, if you duplicate the recipe by making a photocopy of the book or magazine page or screen-print of the webpage on which it appears, your copy of the recipe might pick up elements of the book design or webpage that do qualify for copyright protection (e.g., illustrations, book layout, webpage design elements). Your capture of those copyrighted elements might qualify under the copyright fair use exception; however, it depends on the specific circumstances of your use. (See Principle Five)

Principle Four. Copyright Does Not Prohibit Anyone from Cooking or Preparing the Recipe. Copyright protection does not prevent you from making and offering a dish based on the same recipe – even if you offer the dish for sale. Likewise, copyright protection does not prevent you from extracting the raw information offered by the recipe – such as the list of ingredients and the preparation instructions – and using that information in your own recipes. (This situation might be different for a recipe protected by trade secret, by patent – and to a lesser extent by contract.)

Principle Five. Duplication of Copyrighted Materials Usually Requires Permission from the Copyright Owner. As a general rule, you should obtain permission before using another person’s intellectual property. This applies to duplication of a copyright-protected recipe as well as other materials protected by copyright such as images, music, films, etc. Exceptions include a use protected as a First Amendment use, as a fair use, or as a parody use. Application of these exceptions is very fact- specific and often subjective. As a bottom line, if you use someone’s copyrighted protected material without consent, there will always be some level of risk – even though the risk might sometimes be minimal. You can find some questions here to help you evaluate the risk of using copyrighted material without permission.

RESPONSES TO QUESTIONS ABOUT RECIPE PROTECTION

These are my responses to the 28 questions and comments submitted by the culinary professionals attending the IACP Protecting Recipes webinar. To minimize duplication, the following responses refer back to the five recipe protection principles outlined above.

COPYRIGHT PROTECTION AND COPYRIGHT REGISTRATION FOR RECIPES

1. Where do headnotes fall in all this? Does the headnote make the recipe different enough to be copyrightable? I understand headnote to mean descriptive text about the recipe. A headnote might provide the expression necessary for copyright protection. (See Principle One)

2. Can recipe photos be copyrighted? Yes, copyright law protects photos and images.

3 &4. What is the process and cost of filing a copyright registration? AND How does one register a copyright (specifically for a recipe)? As outlined in the blog posts on Copyright Protecting Your Work, Part One and Part Two, to register your copyright, you must submit three items to the Copyright Office: a completed application, a deposit, and a filing fee. and. As of this writing, the copyright registration filing fee for a basic registration starts at $35. For additional assistance with preparing a copyright registration application, the Copyright Office publishes several information circulars and The Cyber Citizen’s Guide Through the Legal Jungle includes fully annotated examples of completed copyright registration applications.

USING OTHER PEOPLE’S RECIPES

Webinar attendees asked numerous questions about “using other people’s recipes”. To answer this question, we must first determine the meaning of “use”. If “use” means copying the text of the recipe into your own book, website or other publication, there is no copyright issue if the recipe is not copyright-protected. (See Principle Three along with its caveat)

If use means preparing the dish based on the recipe and even selling that dish, you can freely do so regardless of whether the recipe is protected by copyright without violating any copyright laws. See Principle Two. If “use” means extract the raw facts – ingredients and instructions - and present them in your own words, you can freely do so regardless of whether or not the recipe is protected by copyright without violating any copyright laws. (See Principles Two and Four)

5. Can a newspaper copy and reprint recipes? Like anyone else, a newspaper can reprint recipes that are not copyright-protected. If the recipe is copyright-protected, the newspaper should have permission to reprint it or should determine that its use falls into an exception for requiring permission such as fair use. (See Principle Five)

6. Are there special rules for using recipes in academic publications (aka using it with citation, etc.)? There are no special rules specifically for an academic publication that wants to re-print a recipe. However, if the academic publication wants to rely on fair use to re-print a recipe, educational and academic uses are favored uses under the fair use analysis.

7. Can you please discuss recipes used on a food product like Toll House cookies on Nestle chocolate chip packaging. The same basic principles apply to recipes used on a food product. One additional concern when duplicating such a recipe is the appearance of trademarks in the recipe text. Toll House and Nestle are both federally registered trademarks. If you want to specify Toll House and/or Nestle products in your list of recipe ingredients, that is a nominative (i.e., a method of referring to a specific product) use of the trademark and thus legally permissible.

8. If you buy a cook book, you have paid for the book including the recipes so why can’t you use them as you like including rewriting them in your own form? By “use” if you mean prepare the dishes presented in the cookbook, you can. (See Principle Four) By “use” if you mean duplicate the recipes verbatim on your website, book, or other publication, duplicating multiple recipes from the cookbook verbatim holds the potential of violating the compilation copyright in the cookbook even if each recipe is not independently copyrightable. (See Principle One – read to the end for relevant point). Yes, you paid for the physical (or electronic) copy of the book. However, ownership of a physical (or digital) copy does not entitle you to reprint, copy, post it on the internet, or further distribute it as you please. Those activities are the exclusive rights of the copyright owner. The same concept applies to dvd’s, cds, novels, artwork, and any other copy of copyright-protected content that you might purchase.

9. As bloggers we post recipes because we'd like people to make the recipes. How does this fit for blogging about a recipe made from another blogger's recipe post and discussing and photographing results? Copyright protection of a recipe does not prevent anyone from making the dish featured in the recipe. (See Principle Four) If you see a recipe on another website, you can make that dish, discuss your experiences in following the recipe, and take a photograph of the dish you make. The activity that might be problematic is duplicating the recipe verbatim if the recipe is copyright-protected. (See Principle Two)

MAKING A RECIPE YOUR OWN

10. When I used to work in recipe development, the golden rule for making a recipe "your own" was changing, significantly, 3 ingredients. Is that an actual edict or just something some food editors came up with? While this golden rule might be a part of the moral code for culinary professionals, it is not a tenet of copyright law – or any other method for the legal protection of a recipe. If the original recipe that inspires you is not eligible for copyright protection, you may legally publish a modified version of the recipe – even if your modifications are minor. (See Principle Three) If the original recipe is copyright-protected and you re-publish it verbatim except for changing three ingredients, the change alone will not shield you from copyright infringement liability. You may prepare the dish featured in the recipe – regardless of whether or not the recipe is copyright-protected. (See Principle Four).

11 & 12. There are only so many ways to make certain dishes, so how do you deal with that and ensuring that your recipes are different enough so you don't get sued? AND If I'm making a recipe about a common food (i.e. overnight oats or salads in a jar), what do I have to do to make it my own? Copyright protects only the text of the recipe – prohibiting you from re-printing the recipe verbatim. Copyright does not prohibit you from preparing the dish or developing your own version of the dish. (See Principles Two and Four)

13. Can I use on my website the recipes I developed while working at a corporate test kitchen or do those recipes belong to the company? The copyright in copyright-protected material developed by an employee within the scope of his employment belongs to the employer as a work made for hire. However, there are several issues you must address for a definitive answer in this situation including the following:

• Are the resulting recipes copyright-protected? Even if the answer is no, this issue requires more analysis because of the employee-employer relationship.
• are the recipes protected as a trade secret (think McDonald’s secret sauce and the formula for Coca-Cola)
• Did the employee sign a contract (e.g., a non-compete or non-disclosure contract) dictating how the employee may use the recipes

CREDITING SOMEONE WHEN USING THEIR RECIPE

14 & 15. What is the correct way to credit someone who wrote a recipe that yours is inspired by? AND So, how do you properly credit someone for their recipe or method? For copyright law purposes, “credit” is not really an issue. If the recipe is not copyright-protected or your use qualifies as a fair use, there is no legal requirement to give credit when using public domain or fair use materials. If the recipe is copyright-protected, giving a credit will not shield you from copyright infringement liability. If the copyright owner has granted you permission to re-print or duplicate a copyright-protected recipe, you should provide whatever credit you negotiated with the copyright owner.

16. Can a recipe be copied verbatim, if credit is given to the recipe author? If the recipe qualifies for copyright protection, copying the recipe verbatim without the copyright owner’s permission is copyright infringement (unless an exception applies) – regardless of whether you credit the recipe author. (See Principles Two and Five)

17. So are you basically saying the literature of a recipe or a group of recipes are the only things that can be protected? For a recipe, copyright can protect the text (literature in your words). For a group of recipes, copyright can protect the text as well as the manner and order in which the recipes are presented (i.e., protection as a compilation).

18. I see recipes on, for example, Martha Stewart's site, then I see that same recipe on a blogger's website. Is that "legal"? There is no credit given. If it is a verbatim copy of the Martha Stewart recipe and the blogger does not have permission for the re-print, it might be copyright infringement. If it is the blogger’s revised rendition of the recipe in the blogger’s own words – it likely presents no copyright issue even if the blogger uses the same ingredients and basic procedures as Martha Stewart’s recipe. (See the Principles)

19. What about recipe round-ups? This is a common way for food bloggers to post recipes from others. Verbatim copying without permission might be copyright infringement – especially if the food blogger is taking multiple recipes from a single source.

USING OTHER PEOPLE’S IMAGES OF DISHES

20. If I wanted to use a recipe and photograph from someone on my website, do I need permission to do so and how would I go about getting that permission? You should obtain permission prior to posting copyright-protected materials on your website. (See Principle Five) The recipe you want to post might or might not be copyright-protected. (See Principle One) The photograph you want to post is highly likely to be copyright-protected. A complete explanation of how to get permission is beyond the scope of this blog post but rights clearance is briefly covered here (within the parallel context of permission for using quotes) and obtaining permission is the entire subject matter of The Permission Seeker’s Guide Through the Legal Jungle .

21. Can the photos and recipes from vintage recipe pamphlets published by food manufactures be used without permission? What if they were published prior to 1923? If the photos and recipes are copyright protected, you need permission or an exception. (See Principle Five) For United States purposes, works published prior to 1923 are in the public domain and are not protected by copyright. There might still be privacy and publicity rights related to the use of the photos if the photos depict people.

TAKING ACTION AGAINST INFRINGERS

22. What can we do if it's not a US based company that infringes? This question was prompted by my description of sending a take-down letter per the Digital Millennium Copyright Act (DMCA) in the event your content is being infringed online. For copyright infringement. The DMCA is effective in taking down content that is hosted by an interactive service provider subject to United States federal law. If the infringer has no contacts with the United States, options include filing a lawsuit in a country in which the infringer does have contacts (an expensive proposition so there needs to be a significant amount at stake for most plaintiffs to take this route.)

23. I've had journalists take my quotes from my website and online interviews previously done with other publications and use them in new stories. Is the journalist committing copyright infringement? If the text on your website is copyright-protected and the journalist’s use does not qualify as a fair use or other exception to copyright protection, the journalist’s use of your material without your permission is copyright infringement. A journalist’s quoting from a website in a relevant news article is a good candidate for a permissible fair use of a quote.

OTHER QUESTIONS – TRADEMARK, PATENT, CANADIAN LAW

24. Is it worth suing over trademark infringement due to cost of filing and pursuing one? The answer to that question has many variables such as the value of the infringed material/trademark, the likelihood of a positive outcome, the defendant’s ability to pay monetary damages, etcetera. While I cannot respond to your question with a yes or a no, I can confirm that pursuing a lawsuit can be costly.

25. When does a patent have to be filed after the item is published? For United States patent protection, there is a one year period after the first public disclosure or offer for sale of an invention by an inventor during which a patent application must be filed. However, there is much nuance regarding what actions trigger the one-year clock and how such public disclosure impacts the ability to obtain foreign patent registration.

26. Do these copyright laws address both US and Canadian law - or is there significant variance between countries? My comments during the webinar and in this blog post address United States law only. I cannot address Canadian law. I invite any Canadian legal professionals who drop by the blog to share any insights in the comment section below on Canadian law impacting recipe protection.

27. Terrific content, Joy! I learned more from you in 5 minutes than I did in an hour-long consultation with a local Intellectual Property attorney! Thanks!

28. Will we be able to get a copy of the presentation? The International Association of Culinary Professionals will make a recording of the webinar presentation available to IACP members through the IACP Speaker Series Archive .

Resource on Rights Clearance & Copyright. What’s New in the Updated & Expanded 2nd Edition

  THE PERMISSION SEEKER’S
GUIDE THROUGH THE LEGAL JUNGLE®
Clearing Copyrights, Trademarks and Other Rights for Entertainment and Media Productions

Second Edition, Updated & Expanded

(Read Complimentary Book Excerpt Here.)

The Permission Seeker’s Guide Through the Legal Jungle explains the rights clearance process and provides detailed guidance for the legal use of music, artwork, names, film clips, and other protected materials.

This Second Edition is completely updated for 2017 and includes new or expanded discussions on the following topics:

Quotes. When and how much can you quote from other people’s material? Considerations for when one may and may not quote books, movies, songs, etc. without permission

Wiretapping. When is it acceptable to record others’ activities, and when is such activity illegal wiretapping? Is it legal to photograph police activity? This topic relates to newsgathering techniques, recording of police by citizen reporters, and documentary productions.

Political and Cause Marketing. A new chapter highlights the rights clearance issues that frequently arise during political campaign season.

Fan Fiction. Fan fiction borrows heavily from existing books, movies, television programs, and other creative works. When is it okay to write, produce, and publish fan fiction?

Videogames. How can you use real people and trademarks in videogames and other software applications? There have recently been several lawsuits against videogame producers for the unauthorized use of real people’s images and trademarks in their games.

Tattoos as Protectable Art. After tattoo artists filed lawsuits against productions depicting real people who are tattooed with the tattoos designed by those artist, using subjects with tattoos has become a concern for filmmakers, photographers, videogame companies, and producers of other creative media.

Graffiti As Protectable Art. To what extent can a producer incorporate graffiti into his work? While there are special circumstances surrounding the copyrightability of graffiti, if the graffiti is copyright-protected, its use is subject to the same restrictions as any other copyrighted work.

Fonts. While fonts themselves are not copyrightable, the software that generates fonts and typefaces can be copyrightable. There might be restrictions on or additional payment requirements for certain uses such as ebooks, websites, and television or film credits.

. . . AND OF COURSE MORE

Review the full table of contents and read an excerpt of the Expanded & Updated Second Edition of the Permission Seeker’s Guide Through the Legal Jungle at www.guidethroughthelegaljungle.com/permission-excerpt.pdf

MORE DETAILS. Authored by Joy R. Butler, Published by Sashay Communications, 978-0-9672940-7-0, 450 pages, paperback, trim size 6 x 9, retail price $29.95. Available at www.GuideThroughtheLegalJungle.com, and from retail and online stores including amazon.com and barnesandnoble.com

How Selecting Music for a Dance Recital Exposes the Complexity of Music Law

A dance company plans to use several musical recordings in conjunction with a dance recital and queries whether its use of the music requires a license.

That seems like a simple question. Yet, it quickly becomes complicated as the dance company’s efforts to research the issue yield conflicting information about how to go about licensing and whether licenses are even required at all.

(My analysis of the dance company’s situation assumes that all the music to be used in the recital is currently copyright-protected and not in the public domain.)

WHY ALL THE CONFUSION AND CONFLICTING INFORMATION?

Song Versus Sound Recording

The dance company plans to use musical recordings. One source of conflicting information might be confusion between permissions needed for the recording versus permissions needed for the underlying song. A recorded musical selection includes a copyright in the recording itself and a separate copyright in the underlying song. Each might have a different owner and each carries different licensing requirements.

There is no general public performance right in a sound recording. Hence, the dance company’s use of the sound recording for a live recital requires no license for the sound recording. (But, as discussed below, the situation changes if the recital is recorded). In contrast, with some limited exceptions, the public performance of a song generally requires a public performance license.

Grand Rights Versus Small Rights

Another source of the conflicting information might be uncertainty over whether the dance company’s use requires non-dramatic performance rights (aka small performance rights) or dramatic performance rights (aka grand or large performance rights) in the song. The first category of small performance rights grants permission to present non-dramatic public performances of a song (such as playing the song on the radio, in a nightclub, or as background music in a film).

The second category of dramatic performance rights provides permission to make a theatrical presentation of a song or act out a song. A dance performance would typically require dramatic performance rights. Non-dramatic performance rights in a song can usually be obtained through one of the performing rights organizations – ASCAP, BMI, or SESAC. Typically, you must contact the song’s copyright owner or music publishing company directly to obtain dramatic performance rights.

WILL THE DANCE COMPANY RECORD THE RECITAL?

If the dance company plans to record and share copies of the recital (either as hard copies or via the internet), in addition to publicly performing the music, the dance company is now reproducing and distributing the music. Those reproduction and distribution activities require a synchronization license for the songs and a master use license for the sound recordingS.

DOES THE DANCE COMPANY PLAN TO LIVE STREAM THE RECITAL?

Song License Requirements for Live Streaming

For the song, live streaming of the dance recital via the internet still requires a public performance license – and, as discussed above, likely a grand or dramatic public performance license directly from the song copyright owner.

Sound Recording License Requirements for Live Streaming

With respect to license requirements in the sound recording for the live stream, I admit to being stymied. What is the necessary clearance for a sound recording heard during a live stream (audio-visual) event offered in real-time only?

As mentioned above, there is no general public performance license for a sound recording, but there is a right to perform the sound recording publicly by means of a digital audio transmission. However, the Copyright Act Section 114 definition of “digital audio transmission” explicitly says “{digital audio transmission} does not include the transmission of any audiovisual work”. Does this mean that a sound recording included in a live audio-visual stream (like a dance performance) is not a digital audio transmission – in which case no sound recording public performance license is needed for the live stream? If anyone knows of case law, additional statutory language in the Copyright Act, or industry practices that shine light on this question, please share.

Of course, if the live stream is to be archived and subsequently shared with others, that results in the same licensing requirements for the sound recording as offering a recording of the recital. A master use license for the sound recording would be required.

Does the Fearless Girl Violate the Copyright of Wall Street’s Charging Bull?

In the late 1980’s, artist Arturo Di Modica created a 7,000 pound bronze bull statue, “Charging Bull”, and surreptitiously placed it in front of the New York Stock Exchange. Di Modica calls the statute a symbol of prosperity and strength. in March 2017, Kristen Visbal’s “Fearless Girl”, a 4-foot statue of a pony-tailed, arms-on-hips young girl, was placed a few feet away where she bravely stares down “Charging Bull”. Di Modica claims that “Fearless Girl” corrupts his artistic message and wants the statue of the girl moved elsewhere.

Does “Fearless Girl” Result in a Derivative Work of “Charging Bull”?

One of the copyright owner’s exclusive rights is the right to prepare derivative works of the copyrighted work. A derivative work is a new work based on or originating from another preexisting work. You can think of a derivative work as a spin-off product or as an adaptation.

For example, the Harry Potter films are derivative works of J.K. Rowling’s novels. If you write new lyrics for the melody of a song or translate the song into another language, you have created a derivative work of the song. Examples of derivative works listed in the Copyright Act’s definition of the term include a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted (emphasis mine).

Does the placement of “Fearless Girl” recast, transform, or adapt the “Charging Bull” artwork. Or, alternatively, is the proximity of “Fearless Girl” to “Charging Bull” more akin to hanging two contrasting paintings next to each other in an art gallery or museum – which is an act that would not result in a derivative work.

Di Modica Might Have Moral Rights in His Artwork

Di Modica claims that the placement of “Fearless Girl” distorts his work. That complaint focuses on moral rights. Moral rights protect the artist’s reputation, honor, and integrity. In the United States, such a complaint often falls flat.  Unlike many European countries where artists have strong moral rights protections, the United States does not generally offer moral rights in creative works.  The Visual Artists Rights Act (VARA) offers a limited exception to this general rule. VARA, which became effective in 1991 and is incorporated into the Copyright Act,  offers some moral rights protections to a very small category of visual artwork.

Sculptures are one of the categories of VARA-protected works so, if “Charging Bull” qualifies for inclusion in that category, Di Modica might have some actionable VARA claims. Under VARA, an artist has the following moral rights:

• the right to claim authorship of the work

• the right to prevent use of his or her name on a work the artist did not create

• the right to prevent use of his or her name on mutilated or distorted versions of the work

• the right to prevent mutilation or distortion of the work

Those last two seem most relevant for Di Modica. Hence, the VARA-related question is whether the placement of “Fearless Girl” in any way mutilates or distorts “Charging Bull”. A very subjective question indeed.

Public comments to the newspaper coverage on the issue are divided. There are those who sympathize with Di Modica and believe “Fearless Girl” radically alters the artistic statement he intends with “Charging Bull”. Then there are those commenters who think Di Modica is being ridiculous and just “needs to get over himself”. So lots of variety for a potential jury pool if Di Modica decides to pursue litigation.

What Are New York’s Rights in “Charging Bull”?

An artist can assign or transfer his exclusive right to create a derivative work. An artist can also waive his moral rights via contract. That begs the question of what rights and permissions New York holds in “Charging Bull”.

The answer is unclear. Evidently, Di Modica initially donated “Charging Bull” by installing it on Wall Street without a permit and without any authorization. City officials first removed the artwork but then relented to public pressure and put it back. Those circumstances suggest that there is no written agreement between Di Modica and the City of New York regarding “Charging Bull”. New York might argue that it holds a valid license to take certain actions regarding the work – even if some of those licenses might be implied rather than written.

(Image Credit: Christopher Penler / Shutterstock.com)

Copyright Implications of Protecting Tattoos. Questions Raised by NBA 2K Video Game Lawsuit.

NBA 2K is a video game series developed and released annually since 1999. Each game features animated, realistic versions of National Basketball Association (NBA) players. The 2014 and 2015 NBA 2K renditions include depictions of NBA players LeBron James, Kobe Bryant, Eric Bledsoe, DeAndre Jordan, and Kenyon Martin. Each of these five NBA players has one or more tattoos and the players’ NBA 2K depictions include their tattoos.

After obtaining rights from the tattoo artists who inked eight of the relevant tattoos, Solid Oak Sketches filed a copyright infringement action against 2K Games Inc. and Take-Two Interactive Software, the producers and distributors of the NBA 2K games. (In its amended complaint, Solid Oak dropped references to Bryant and Jordan and reduced the number of relevant tattoos to six.)

Initial Procedural Loss for Solid Oak

The court has already ruled that Solid Oak may not pursue statutory damages and attorneys’ fees in the lawsuit since the copyright registration applications for the eight tattoos were not timely filed. However, Solid Oak is continuing the lawsuit for actual damages.

Special Copyright Considerations for Tattoos

I have previously blogged about tattoos as protectable art. Already, the initial court filings of Solid Oak, 2K Games, and Take-Two Interactive raise many interesting questions about copyright protection for tattoos including the following:

When Is a Tattoo “Fixed”? Solid Oak filed the copyright registrations for the tattoos during summer 2015 – nine to seventeen years after the tattoos were applied to the NBA players. 2k Games and Take-Two allege that Solid Oak copied images of the NBA players from the internet for the deposit copy that must be submitted with the copyright application. If that is true, it suggests that the tattoo artists did not retain copies of their original tattoo designs (i.e., didn’t fix them anywhere other than on the players’ bodies).

As a result, the court might address – among other issues - whether a tattoo that exists only on an individual’s body qualifies as fixed in a tangible medium of expression as required for copyright protection. Some legal commentators argue it does not – while others insist it does.

What Is the Result of Collaboration between Tattoo Artist and Tattoo Recipient? Many tattoo recipients provide detailed instructions and even specific designs for creation of their tattoo. At what point does input from the tattoo recipient result in the tattoo recipient being a co-owner or even sole owner of the resulting tattoo? According to 2k Games and Take-Two’s description, each of the relevant tattoos was created with contributions and guidance from the NBA player. As an example, James provided a photo of his son for the child portrait tattoo inked on his arm.

What Is the Impact of Modifying the Tattoo? Body tattoos are designed to last a lifetime. But your desires for that tattoo might change as you live your life. What happens if your tattoo is later modified by a different tattoo artist? Who can then claim ownership of the tattoo? In the NBA 2K case, the arm tattoo of James’ son, originally applied in 2006, has been changed by different tattoo artists over the years to add more detail.

What Is the Appropriate License Fee for Incidental Use of a Tattoo? Here is how Solid Oak’s attorney calculated a proposed settlement fee according to correspondences attached to the complaint. To begin the calculation, Solid Oak used the $22,500 court award to tattoo artist Christopher Escobedo in a separate dispute involving a depiction of UFC champion Carlos Condit (wearing Escobedo’s lion tattoo on his rib cage) in the video game, UFC Undisputed.

• Dividing the $22,500 award by the 4.1 million copies of the UFC Undisputed game sold yielded a per unit award to Escobedo of 0.55 cents per unit. (Incidentally, Escobedo appealed the bankruptcy damage award and settled the claim outside of court for an undisclosed – but presumably higher - amount.)

• Multiplying 0.55 cents by the 8 tattoos used in the NBA 2K games yields a 4.4 cents license fee due for each applicable copy of the NBA 2K game sold

• Multiplying 4.4 cents per unit fee by the approximately 13 million units sold of NBA 2K14 and NBA 2K15 yields $572,000.

• Plus a front-cover premium. In its settlement correspondences, Solid Oak indicated that the NBA 2K14 cover features LeBron James with two of the relevant tattoos visible. Solid Oak asserted that the front cover tattoo depiction was worth a premium – calculated by tripling the 0.55 cents per tattoo per unit fee which yields a $1.65 premium per unit for each cover-featured tattoo.

• Multiplying $1.65 by the 7.5 million units sold of NBA 2K14 yields a $123,750 premium for each of the two tattoos depicted on the cover.

• Totaling $819,500 for the prior unauthorized reproductions, displays, and public disseminations of the eight tattoos

• Plus an optional $1,144,000 charge for Solid Oak’s offer of an ongoing perpetual license to continue using the eight tattoos for future NBA 2K editions.

Solid Oak’s Total Proposed Price Tag for Past and Ongoing Video Game Depictions of the 8 Tattoos: $1,963,500

What boggles my mind is the tattoo premium requested for LeBron James’ appearance on the cover. The request strikes me as a misguided assessment that treats James’ appearance on the cover as incidental to the tattoos’ appearance – rather than vice versa. In my mind, it’s James who attracts eyes to the cover; not his tattoos.

Solid Oak v. 2K Games might be the first tattoo copyright infringement lawsuit to be decided by a court on its merits – rather than by the parties’ out-of-court settlement. If so, it will be an interesting case to watch. (The case is Solid Oak Sketches v. 2K Games and Take-Two Interactive Software, No. 16CV724-LTS (S.D.N.Y., Filed Feb. 1, 2016)  

Finer Points of Online Copyright Registration: the Single Application versus the Standard Application

Registering the copyright in your creative work seems relatively simple. After all, the copyright registration process requires only sending the U.S. Copyright Office three items:

• a completed application,
• the filing fee, and
• a copy of the work (called a deposit).

Yet, some confusing – albeit certainly not unsolvable – questions can materialize at the start of the process. One such potential quandary is whether you may use the “single application” or must use the “standard application” for your electronically-filed copyright registration.

Benefits of Electronic Copyright Registration

The Copyright Office encourages electronically-filed applications over mailed-in paper applications. Electronic registration offers registrants the following benefits:

• a lower filing fee,
• faster processing time,
• the ability to track application status online, and
• fewer opportunities to make errors on the application.

Single Application Eligibility

In June 2013, the U.S. Copyright Office introduced the single application as an additional option for electronic registration designed to streamline the process for applications viewed as the most administratively simple. Registration on the single application is available only if the application meets all three of the following requirements:

A Single Author. Works with two or more authors are not eligible.

A Single Owner (i.e., claimant), who must be the same person as the author. This excludes a work created by an individual author who wants to hold ownership in the work through a separate corporate entity. The owner may not have obtained any portion of the ownership interest through a work made for hire or other assignment.

A Single Work. This means that the application must be for one book, one song, one poem, one photograph, etc. Single application filing is not available for collective works, unpublished collections, group registrations, databases, or websites.

Works eligible for electronic registration (not all works are so eligible) but not meeting all the single application requirements must be filed on the standard application.

Consequences of Incorrectly Using the Single Application

If you use the single application for a work that is not eligible, your mistake will delay processing until you submit the additional filing fee. Currently, the single application electronic filing fee is $35 while the standard application electronic filing fee is $55. More significantly, your effective date of registration will not be until the date on which the Copyright Office receives the proper fee. With the Copyright Office currently taking up to eight months to process electronically-filed applications, the delay in filing date could potentially make you ineligible for attorney’s fees and statutory damages in the event your copyright work is infringed.

For More Information

The Copyright Office offers on its website very helpful step-by-step tutorials on preparing the single electronic application and the standard electronic application.

Google Books Program Wins Another Fair Use Victory

Background

The Authors Guild v. Google, Inc. case began over ten years ago. In 2004, as part of the Google Library Project, Google entered into agreements with several libraries to digitize books in those libraries’ collections. Books digitized included books still protected by copyright. Google displays snippets – or several lines of text - of the digitized books in Google search results. The participating libraries are allowed to retain digital copies of the books they submit with the contractual understanding that the libraries will not use their digital copies in any manner that violates copyright laws.

For its Library Project and related Books Project, Google has digitized tens of millions of books without the authorization of the books’ publishers or authors. In 2005, the Authors Guild, the Association of American Publishers, McGraw-Hill Companies, Simon & Schuster, John Wiley & Sons, and five individual authors filed a copyright infringement lawsuit against Google in the Southern District of New York. The district court found Google’s use of the books to be fair use and granted summary judgment to Google. The Authors Guild and the other plaintiffs appealed.

In this recent ruling, the Second Circuit  agreed with the district court and concluded that Google’s use of the books is a fair use and, therefore, non-infringing.

The Authors Guild's Arguments on Appeal

The Second Circuit rejected all of the Authors Guild’s arguments. Here are those arguments and the court’s corresponding responses summarized in much more simplified terms than expressed in the court’s 49-page opinion:

1. The Authors Guild argued that neither Google’s digital copying of entire books nor allowing users to read snippets of those books qualifies as a transformative use. Court’s response: Snippets serve the transformative purpose of identifying books of interest to the searcher. In order for Google to offer the snippet feature, Google needs a complete digital copy of the books in its system. Also, having complete digital copies of millions of books within its search engine has enabled Google to facilitate new forms of linguistic research (e.g., examination of word frequencies, syntactic patterns, and thematic markers).

2. The Authors Guild argued that the snippets function as a substitute for the entire book. Court’s response: While Google makes an unauthorized digital copy of the entire book, Google does not make the complete digital copy available to the public. Furthermore, the limitations Google places on the snippet feature – such as blocking about 22% of each book from snippet view and returning the same snippets for a searched term regardless of how many times or from how many different computers the term is searched - means that viewing a book through the snippet feature cannot serve as a substitute for the entire book.

3. The Authors Guild argued that even though public access to the snippet feature is without charge and without advertising, Google’s ultimate commercial profit motivation precludes a finding of fair use. Court’s response: While acknowledging that fair use often favors nonprofit uses, the court highlighted that some of the most universally accepted forms of fair use, such as news reporting, are normally done commercially for profit.

4. The Authors Guild argued that the book-related programs infringe authors’ derivative rights by negatively impacting authors’ ability to exploit search markets. Court’s response: Google’s search and snippet features allow the public access only to very limited information within the book and do not allow any substantial access to a book’s expressive content. Authors do not have an exclusive derivative right to supply information about their works of the sort communicated by Google’s search functions.

5. The Authors Guild argued that Google’s storage of digital copies exposes authors works to hacking and piracy. Court’s response: The books digitized by Google are stored on servers protected by the same security systems Google uses for its own confidential information. The court found Google’s security systems to be “extensive” and “impressive”.

6. The Authors Guild argued that Google’s distribution of digital copies to participant libraries is not a transformative use, and subjects authors to the risk of loss of copyright revenues through access allowed by libraries Court’s response: The libraries proposed use of their digital copies was a fair use since that use entailed making available to library patrons the same type of digitized book searches that Google offers to the Internet public. Also, the participating libraries contractually agreed to use their digital copy in a copyright-respectful manner and to take precautions to prevent dissemination of their digital copies to the public at large. Under those circumstances, Google’s giving each library digitized copies of books already owned by the library is not an infringement.

Why This Case Has Taken So Long

One reason, this lawsuit has continued for more than ten years is that the Authors Guild and Google reached a proposed settlement in 2009. The settlement agreement with its attachments ran 300+ pages. (The historically curious can review the 10-page annotated summary I prepared in 2009 of the Google Book Settlement Agreement.)

One of the troubling components of the rejected settlement is that it was opt-out and not opt-in. The rejected settlement would have applied to anyone who had a copyright interest in a book that was published on or before January 5, 2009 – unless that person took affirmative steps to opt out of the settlement. Also, the rejected settlement allowed Google to make much greater use of digitized books than just snippets – in return for payment to authors. For these and other reasons, the New York district court rejected the proposed settlement in 2011 – and the parties returned to litigating the original copyright infringement claims.

Proof that Using Creative Commons Material Is Not Risk-Free

One might think that using properly licensed material would guarantee insulation from a copyright infringement lawsuit. Apparently not. At least not for Kappa Map Group’s recent use of material per a Creative Commons license.

Background of Creative Commons License Dispute in Drauglis v. Kappa Map Group

Kappa Map Group is a Pennsylvania-based publisher of maps and atlases. In July 2012, Kappa Map published an atlas entitled “Montgomery Co., Maryland Street Atlas”. The front cover of the atlas features a photograph of the Montgomery county landscape (presumably) entitled “Swain’s Lock”.

Kappa Map obtained the Swain’s Lock photograph from the online photo-sharing site, Flickr. The photographer, Art Drauglis, had uploaded the photograph to his Flickr account and selected the option of making the photograph available to others under the terms of a Creative Commons Attribution-Share Alike License.

What Is a Creative Commons License

Creative Commons is a non-profit organization offering free license documentation that copyright owners can implement to make their works available for use by others. When using material under a Creative Commons license, one need not pay a fee nor obtain direct permission from the licensor as long as one follows the terms of the license.

There are numerous forms of Creative Commons licenses. While all Creative Commons licenses do not permit commercial use, the Attribution-Share Alike license selected by Drauglis for the Swain’s Lock photo does.

Photographer Sues Kappa Map Group on Creative Commons Technicalities

As permitted by the Creative Commons Attribution Share-Alike license, Kappa Map used the Swain’s Lock photograph without notifying the photographer and without specifically asking him for permission. When the photographer learned that his photo adorned the front cover of the Montgomery Co., Maryland Street Atlas, he filed a copyright infringement lawsuit against Kappa Map.

The photographer did not dispute that he published the photograph under a Creative Commons license that authorized commercial use. Instead, he argued that Kappa Map’s use was beyond the scope of the license. Ultimately, the court concluded that Kappa Map’s use was indeed within the scope of the Creative Commons license and that the use was not infringing. In reaching that conclusion, the court rejected the following three technical arguments presented by the photographer:

Free Distribution of Atlas. The photographer argued that Kappa Map did not distribute the atlas for free as required by the license (the “ShareAlike Requirement”). The court found that the ShareAlike requirement applied only to derivative works of licensed material. According to the court, while the atlas included the photograph, the atlas was not a derivative work of the photograph. Therefore, the ShareAlike Requirement did not apply to the atlas and it was fine for Kappa Map to charge a monetary fee for the atlas.

Adequate License Information. The photographer argued that the Kappa Map atlas did not include adequate information about the Creative Commons license since Kappa Map did not print the url to the license on the atlas. The court disagreed determining that inclusion of a url was not mandatory and that Kappa Map satisfied the information requirement by including on the atlas back cover the notation - Creative Commoms [sic], CC-BY-SA-2.0 – which contained the license’s uniform resource name.

Proper Attribution for Photographer. The photographer argued that Kappa Map did not provide proper attribution for the photograph. The license requires that Kappa Map provide authorship credit in a manner comparable to and as prominent as credit provided on the atlas for materials comparable to the photograph. Credit for the photograph appeared on the back cover of the atlas in 7-8 point type as follows:

 

Photo: Swain’s Lock, Montgomery Co., MD
Photographer: Carly Lesser & Art Drauglis, Creative Commoms [sic], CC-BY-SA-2.0

 

The photographer argued that the material comparable to the Swain’s Lock photo was the entire 112-page atlas. Copyright notice for the entire 112-page atlas was on the first page of the atlas and was in at least 10 point type. The court found that the material comparable to the Swain’s Lock photo was not the entire 112-page atlas; but instead each individual map. The credit for each individual map was a bottom-of-the-page notation of “© Kappa Map Group, LLC”. The court concluded that the back cover credit given for the photograph was comparable to and as prominent as the individual map credit.

Lessons To Be Learned by Licensors and Licensees

Creative Commons Materials Are Not Risk-Free. While I view being sued by a Creative License licensor as a rarity, the other risks associated with Creative License materials are much more likely to emerge.

Read the Fine Print When Uploading Your Material to Websites and Social Media Networks. If you care about how the material is used, don’t just blindly accept the terms without understanding their impact – which is what the photographer of Swain’s Lock seems to have done when uploading the image to Flickr. Not all online postings provide the option or requirement of granting a Creative Commons license. However, as I discuss here and here, posting to social media sites such as Twitter and Facebook typically entails granting broad non-exclusive rights to the social media website to use your material (although users of the social media site don’t always have corresponding carte blanche to use your material).

Understanding and Complying with License Terms Is Important. While this is true of all licenses, perhaps it is more true for Creative Commons licenses since all licensors might not fully understand the rights they are granting and might challenge licensees on technicalities. From my reading of the Kappa Map court opinion, it seems that Kappa Map’s actions were certainly within the spirit and made with the intent of full compliance with the Creative Commons license. Fortunately for Kappa Map, the court found the company to be in full compliance with all the technical minutiae of the license. Other licensees might not be as diligent – or as lucky.

Sometimes a Paid-For License Is Less Expensive Than a Free License. Using Creative Commons material is attractive because use is free and requires no direct permission from the licensor. But sometimes “free” results in substantial expense. Even though Kappa Map prevailed in the copyright infringement lawsuit, the company’s use of the Swain’s Lock photo resulted in fourteen months of litigation. The Copyright Act allows the prevailing party in a copyright infringement lawsuit to seek payment of its attorneys’ fees and costs by the other party. Courts have discretion in granting such awards. Kappa Map asked for but was not granted an award of attorney’s fees and costs.

The case is Drauglis v. Kappa Map Grp., LLC, No. 14-1043 (ABJ) (D.D.C., 2015). As of the writing of this post, the Swain’s Lock photo can be viewed here and the Kappa Map Group atlas cover featuring the Swain’s Lock photograph can be viewed here.

Minimizing Risk when Delegating Company Social Media Activities. Use of Images.

Train Staff and Freelancers in Basic Copyright Principles

Communicate to freelancers and staff that all company social media postings should respect others’ intellectual property rights. Ensure that individuals handling the company’s social media accounts have general awareness of copyright, fair use, and other rights clearance issues – whether you accomplish that task via an in-house training session, a third party webinar, a company handbook, or alternative means.

The copyright infringement lawsuit filed by the North Jersey Media Group (NJMG) against the Fox News Network illustrates what can go wrong when a company does not provide clear guidance to staff responsible for social media. NJMG sued Fox after Fox posted an NJMG-owned iconic 9/11 image to a Facebook page promoting the Justice with Judge Jeanine television program. After Fox's argument that the use was entitled to a fair use protection was rejected in a summary judgment motion, Fox elected to defend its use in a jury trial scheduled for early 2016. (See Note)

Here’s how the 9/11 image found its way to the Justice with Judge Jeanine Facebook page, according to the Fox-NJMG court documents:

A Fox production assistant held principal responsibility for managing and posting content to the Justice with Judge Jeanine Facebook page. She found and selected the 9/11 image for posting on Facebook after conducting an internet search on Google. The decision to post the image was hers. The production assistant, who had majored in journalism and media studies, had no copyright law training in college nor during her three-year tenure at Fox.

While the production assistant had access to the legal department and had previously consulted with it regarding the fair use of photographs and videos on the television program, she had never sought legal advice for postings on the Facebook page and did not seek the advice of the legal department or anyone else associated with the program before posting the iconic 9/11 image.

 

Encourage Staff to Use Pre-Cleared Pools of Creative Materials

Staff persons with no copyright training should not meander the internet in search of images to post to the company’s webpage and social media accounts! Read that sentence again.

Even images that appear to be rights free or come with Creative Commons licenses can still be problematic. With respect to relying on fair use, not even experienced copyright attorneys can always accurately predict which uses a court will view as a qualified fair use.

It might not be possible – or even desirable – to have a legal consultation for every image to be posted to the company’s social media accounts. One potential solution is making a bank of pre-cleared images available to staff and freelancers. There are stock image libraries of all sizes with the larger ones offering millions of images.

What’s ironic about the Fox-NJMG copyright lawsuit is that Fox may have actually had a license to post that iconic 9/11 image. Fox subscribed to the Associated Press photo bank and the 9/11 image is among the images the AP makes available to subscribers. Fox discovered this fact in the middle of the proceedings and after the deadline to amend its answer to NJMG’s complaint. The court would not allow Fox to amend its answer to add the defense of license. (North Jersey Media Group v. Pirro, No. 13 Civ. 7153 (S.D.N.Y., Mar. 2, 2015)).

The Lesson. If you have a blanket license to an image library, encourage – or, even better, restrict staff and freelancers to using images from that image library. Companies can apply similar strategies to music and footage by subscribing to stock music and stock footage collections.

Of course, even using stock images requires a modicum of guidance as there are definitely wrong ways to use stock images.

(NOTE: This posting previously incorrectly reported that NJMG and Fox settled the dispute after Fox’s failed summary judgment motion attempt. While the parties reportedly came close to settlement, those discussions ultimately proved unsuccessful.)

What the 9th Circuit Does and Does Not Tell Us about Fair Use and the DMCA. Ruling in Lenz v. Universal Music (a.k.a. Prince and the Dancing Baby Case)

Background

Everyone will be blogging about this case so I’ll keep my background description short.

On February 7, 2007, Stephanie Lenz uploaded to YouTube a 29-second home video of her two children dancing to the Prince’s song, “Let’s Go Crazy”. Universal Music Publishing, Prince’s publishing administrator at the time, issued a takedown notice under the Digital Millennium Copyright Act (DMCA) and YouTube removed the video. Lenz objected to the takedown and, with the aid of the Electronic Frontier Foundation, launched a lawsuit against Universal Music. Lenz argues that her video usage of “Let’s Go Crazy” is a fair use and that Universal Music’s issuance of the takedown notice was bad faith and constitutes misrepresentation under the DMCA.

After eight years of litigation, here is what the 9th Circuit does and does not reveal about copyright fair use and the DMCA in its opinion issued on September 14, 2015.

The 9th Circuit Does Tell Us

DMCA Takedowns Require a Fair Use Consideration. A copyright owner must consider the existence of fair use before sending a DMCA takedown notice.

A Fair Use Is a Legally Authorized Use. The DMCA unambiguously contemplates fair use as a use authorized by the law. As a result, If the online content uses the copyright owner’s material in a manner that qualifies as a fair use, the copyright owner may not send a DMCA takedown notice. This is because, under such circumstances, the copyright owner may not legitimately make the required DMCA takedown statement that the copyright owner has a “good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.”

Copyright Owner’s Fair Use Assessment Need Not Be Correct; Good Faith Is Sufficient. The copyright owner sending a DMCA takedown notice need only have a subjective good faith belief that fair use does not apply. As long as it holds such a good faith belief, the copyright owner is not liable for any DMCA misrepresentation - even if a court subsequently reaches the opposite conclusion and decides that fair use does indeed apply.

Intensive Analysis Is Not Required. In order to comply with DMCA requirements, the copyright owner’s fair use analysis need not be searching or intensive.

Computers May Perform Fair Use Analysis. Computer algorithms can be a valid mechanism for considering fair use as part of the copyright owner’s identification of content to be taken down. This is the view of the majority. The dissenting judge – who agreed with the final result but disagreed with portions of the majority’s analysis – believes that a copyright owner may rely solely on a computer algorithm only if the computer algorithm can apply the four-factor copyright test indicated in the Copyright Act. While perhaps not impossible, getting a computer to apply what is a subjective and often fickle four-factor determination seems like quite a challenge.

Willful Blindness Negates Good Faith. The willful blindness doctrine may be used to determine whether a copyright owner made a misrepresentation in its DMCA takedown request. In other words, if a copyright owner subjectively believes that there is a high probability that a particular use qualifies as a fair use and takes deliberate actions to avoid learning of the fair use, then the copyright owner’s sending a takedown notice for removal of the material is a DMCA misrepresentation.

Damages Available Even If Plaintiff Suffers No Actual Loss. A plaintiff whose material is removed as a result of a DMCA takedown notice with a misrepresentation does not need to demonstrate any actual monetary loss in order to recover damages. Such a plaintiff may seek recovery of nominal damages from the copyright owner.

The 9th Circuit Does NOT Tell Us

Is It Fair Use? The 9th Circuit does not decide whether using 29 seconds of a copyrighted song in a family video and posting that video to the internet qualifies as a fair use of the song. That determination remains for the lower court. It could be quite some time before we have a court’s answer to this underlying fair use question. Commentators indicate that the Lenz parties might seek a Supreme Court review of the DMCA misrepresentation issue.

How Does a Copyright Owner Satisfy the Good Faith Standard? While the 9th Circuit reveals that the copyright owner’s good faith belief that fair use does not apply is sufficient for the DMCA required fair use consideration, it does not provide many details on how copyright owners should get to this good faith belief.

Here’s how Universal Music handled its YouTube DMCA takedown selection process An assistant in the Universal Music legal department monitored YouTube on a daily basis. For those videos including Prince songs, the assistant evaluated whether the video made significant use of the song, whether the song was recognizable in the video, whether the song was in a significant portion of the video, and the song was the focus of the video. While none of the Universal Music video evaluation guidelines explicitly included consideration of the fair use doctrine, the assistant did not issue DMCA takedown notices for videos that used a second or less of a Prince song or in which the Prince song was distorted by a noisy environment.

The majority of the 9th Circuit did not render a decision on whether Universal Music’s process satisfied the good faith fair use determination required by the DMCA. Instead, it decided there was a factual dispute regarding whether Universal Music’s procedure satisfied the good faith requirement and left the question for the lower court. In contrast, the dissenting judge says that Universal Music’s policy did not meet the good faith standard because Universal Music did not clearly include a fair use consideration as part of its DMCA selection process.

You can view the Lenz family video on YouTube here. You can read the full 9th Circuit opinion here.