Category Archives: Copyright

Why Garcia Matters: The Unraveling Of An Uneasy Bargain

It’s been a few days since Hon. Alex Kozinski, Chief Judge of the Ninth Circuit (Federal) Court of Appeals, issued his decision in Garcia v. Google et al, relating to whether or not an actress whose image and actions were used in an anti-Islam film polemic could insist that YouTube (owned by Google) take down the film. Hon. Kozinski decided that she could, finding, in an unusual procedural position (review of a denial of a motion for a preliminary injunction) that she likely has a cognizable copyright interest in her performance. The significance of her having a colorable copyright interest is that Google/YouTube is arguably liable for copyright infringement if it ignores her request to remove the infringing material. This exposure arises under the Digital Millenium Copyright Act, which provides a “safe-harbor” for companies hosting infringing materials, provided that they acted to remove the materials after notice. This is generally referred to as the DMCA takedown procedure.

So, to summarize, Google did not remove the video after her take-down requests (8 of them, in fact) because Google did not believe that she, as an actor in the film, had a protectible copyright interest. Hon. Kozinski found she did have such an interest. Thus, then, ergo, the film should be removed from Google’s service.

Many estimable scholars have written in the succeeding days about how wrong-headed this decision is, strictly on copyright grounds. I tend to agree. True, there is a mystifying (to me, at least) discussion about express and implied licenses which looks to be little more than a mechanism for allowing the Court to make the case that Ms. Garcia was taken advantage of, lied to, and is otherwise not at fault. I’ll leave that to scholars.

Under the facts set out by both the majority and minority decisions, Ms. Garcia has suffered a wrong. She was paid $500 for a part in a film that was never released. Instead her footage was repurposed into the objectionable work, and words she never spoke were overdubbed onto her performance. Because the film is ill-liked by certain interests, her participation resulted in death threats and other attacks that none of us sign up for.

What, then, was the wrong?

That’s the slippery problem here. Google harbored no demonstrable ill-will toward her: it was simply the platform by which the film was displayed. Ms. Garcia was duped by the people who filmed her and they carried out the ruse. She sued them. According to the 9th Circuit Opinion, they never answered. They have gone to ground. In common parlance, they are judgment proof, or at least aren’t willing to answer to Ms. Garcia in court. see footnote 1: ” Although Garcia’s suit also named the film’s producers, only Google,which owns YouTube, answered the complaint.”

Google answered. Google is unlikely to be legally responsible for bad things that happened to Ms. Garcia, because of section 230 of the Communications Decency Act which  says that “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider” (47 U.S.C. § 230). (emphasis supplied).

In other words, and to paint the strokes very broadly, Google can’t be responsible to Ms. Garcia for simply hosting the film on YouTube under theories of tort which she might have available for the doubtless personal anguish she has suffered. For example, she might have claims of misappropriation of her likeness, false light, libel (a stretch) or some other theory that would get at how she has suffered at the hands of the producers and filmmakers who put her in this position.

But not Google, thanks to section 230.

As the Electronic Frontier Foundation states:

 In other words, online intermediaries that host or republish speech are protected against a range of laws that might otherwise be used to hold them legally responsible for what others say and do. The protected intermediaries include not only regular Internet Service Providers (ISPs), but also a range of “interactive computer service providers,” including basically any online service that publishes third-party content. Though there are important exceptions for certain criminal and intellectual property-based claims, CDA 230 creates a broad protection that has allowed innovation and free speech online to flourish.

Can’t argue with that either… Section 230 has provided a means for all manner of hosted material, including some pretty heinous stuff (no, I refuse to link it) to be distributed without the hosts (YouTube, Twitter,  you name it) having legal exposure.

Except. Now look back at the EFF commentary above: “there are important exceptions for certain criminal and intellectual property-based claims”

Boom. Enter Hon. Kozinski, and Garcia’s counsel. It was necessary to carve out an identifiable copyright interest that Garcia could assert, so that Google would not enjoy the protections of Section 230.

Most would say that section 230 allowed the Modern Internet to grow, expand, and flourish. Back in the Internet Stone Age, there were cases litigated against Prodigy (look it up), Compuserve, and other hosts, and their flexibility in offering services was likely hindered by uncertainty of when and under what circumstances they could get tagged for allowing someone else to use their service to post, let’s say, libelous material. The story (allegedly) goes that the guy on whom Jonah Hill’s character was based in “Wolf of Wall Street” was incensed at a posting on Prodigy and sued Prodigy for libel in a third party post. Stratton Oakmont, Inc. et al. v. Prodigy Services Company, et al. 1995 N.Y. Misc. Lexis 229, (N.Y. Sup. Ct. Nassau Co., 1995) motion for renewal denied 1995 WL 805178 (Dec. 11, 1995).That was the environment before Section 230.

So, between section 230, and the DMCA copyright safe harbor, it seems there was an uneasy bargain struck (see the title of this post) to say, essentially, that people enabling internet services would not be responsible for “soft” injuries to persona, bad feelings, hurt feelings, harm to reputation, the kind of things that tort law covers. On the other hand, economic injuries, like copyright infringement, were fair game–but only if the DMCA safe harbor rules were ignored.

But, Hon. Kozinski has thrown a wrench into the works. Ms. Garcia’s harm is real, but is it economic? It is now, so long as Garcia stands. For years, the on-line world operated by the bargain struck above, but now a personal interest not to be duped or mis-presented has been characterized as an economic/copyright interest (“Garcia may assert a copyright interest only in the portion of “Innocence of Muslims” that represents her individual creativity“).

That’s what the fuss is about.


Transformative Use Won’t Be Reviewed by the US Supreme Court

The Supreme Court has declined to accept review of a case from a photographer, Patrick Cariou who said that painter Richard Prince violated his copyrights with paintings and collages based on the photographer’s published works.

The November 12 decision not to accept certiorari on Tuesday refused to hear an appeal from a decision of the US Court of Appeals for the Second Circuit. Cariou, the plaintiff,  said Prince used pictures that were taken by Cariou for his book “Yes, Rasta.”

Cariou took the pictures during six years he lived with Rastafarians in Jamaica. Prince altered and incorporated several of the photographs in a series of paintings and collages titled “Canal Zone,” exhibited in 2007 and 2008.

But the federal courts said Prince transformed most of the pictures enough so that Prince’s art could be considered a “fair use” of Cariou’s work. The Supreme Court refused to reconsider that decision.

The Second Circuit said that the standard for determining fair use depended on whether an observer would find the new use transformative of the original. It said that Prince’s manipulations of Cariou’s photographs met that test in the majority of the paintings because they presented a “crude” aesthetic that was different from Cariou’s “serene” work.

It also said that Prince’s paintings did not need to comment on Cariou’s in order to be transformative. Prince had previously testified that he did not intend to comment on the photographs, and that testimony played a large part in the district court’s decision, which had ruled in favor of Cariou.

Some have criticized The Second Circuit’s decision has been criticized by many lawyers who assert that it does not provide them with clear guidance in copyright questions. These criticisms fall into the trap often seen in fair use cases where there is a perceived need to quantify what can and cannot be appropriated before deciding whether an infringement has occurred. Cariou’s lawyer had asked the Supreme Court to review the appellate court’s standard, which he characterzed as an “I know it when I see it” approach that is “necessarily subjective, arbitrary and unworkable”

The 2nd Circuit opinion is a thoughtful approach to fair use and transformation, and it makes sense for the Supreme Court to let it stand.  Little to be gained from a High Court review.


MPAA Goes To School

The folks who consistently bring you file-sharing suits have decided to go to the source: curriculum content in schools, to combat piracy. Probably artists would prefer that the money would go to increasing their royalties, but that ignores the fact that there is a piracy-industrial complex that must be heard. Of course piracy is bad, but is this issue-setting program the best way to get it? Some would argue that by making content available for a fair rate would help more.

Stir The Pot

Derek Khanna, who famously authored the Republican Study Committee Report published and hastily pulled after the November election has weighed in, (via the Cato Institute (buyer beware) with a recap. It worth a read even if the Cato folks are just a bit terrifying.

Round Up On Artists’ Termination Rights

PRI (public radio ) has a nice piece on the upcoming flood of artist termination rights issues.

Happy 2013

More On Artists’ Termination Rights

My previous post concerning the rights of creators to exercise termination rights in copyrighted works has generated a lot of interest. It’s  an issue which is likely to get greater attention in the months ahead, as creators begin to understand the opportunity in 17 U.S.C. sec. 203.

But, as noted before, there are traps for the unwary, and those who have been uninformed or underinformed up until now may fall into the “unwary” category.

Take for example musical recordings. There are separate copyright interests protecting compositions, as opposed to master recordings of musical performances. And, the role of the artist overlaps in these, but is not identical.

Generally, any type of transfer or license that authors make with their copyright(s) can be terminated. This includes assignments (even such grants that purport to give someone else power over your copyright forever!) The grants that you can terminate apply only to transfers of copyrights; trademarks and other “related” non-copyright rights are not affected or terminable (e.g., if you transferred the trademark in your band name to your label, it will retain ownership of the trademark).

However, there are a couple of exceptions:

•  Works for hire. You, as an employee, make a musical work within the scope of your employment, or by an independent contractor, as a specially ordered or commissioned work for use as a contribution to a collective work or as a compilation or as part of an audiovisual work.
•  Grants by a decedent’s will. (It’s a 35-year tail on these rights, so that is likely a concern for many)
•  Grants made by persons other than the author(s).
•  Derivative works. Derivative works (think adaptations, synchronization uses, or officially-sanctioned remixes) made under a grant can still be used after termination; however, no further derivative works may be created by the original licensee based upon the work that was originally licensed or assigned.

Let’s take songwriters as an example, While songwriters may be able to fend off a work-made-for-hire claim, a court may consider give credence to the use of such a defense by a record company in relation to a recording artist’s or producer’s attempt to terminate post-1977 grants in sound recordings? A record company could argue that it:

  • advanced all recording costs associated with the creation of the sound recordings;
  • had the right to accept or reject the master recordings submitted by the recording artist;
  • had the right to select the recording studios and the producers for the projects; and
  • engaged writers to create musical compositions when the recording artist is not a songwriter.

Moreover, recording agreements typically purport to “acknowledge” that artists work for hire. Similarly, copyright registrations filed by record companies specify that the sound recordings/masters created by recordings artists are “works for hire”.

On the other hand, recording artists could argue that:

  • unique skill and creativity are required to record songs;
  • standard recording agreements may state that if the recording artist is not a worker for hire, their copyright interests are assigned to the record company;
  • artists are not treated as an employee with respect to taxes or employee benefits [you can count on that];; and
  • although the record company initially covers the costs of production, these are fully recoupable by the record company from the artist’s royalties [you can also count on that!].

Still with me? If you have, or think you have copyright termination rights, proceed thoughtfully, carefully, and with solid advice.

Fuse Lit In 1978, Artist Termination Rights May Explode on January 1

Whilst the U.S. Congress seems to be doing its best to honor big entertainment and frustrate public discussion of copyright reform, there’s an issue bubbling below the surface that will bring artists’ rights to the fore both in public discussions as well as, you guessed it, litigation.

Here we discuss section 203 of the 1978 Copyright Act which provides a path for authors/creators to terminate any contract after 35 years.  Back in the distant late 1970’s (yes, I was a lawyer, even then), during the Ford Presidency (look it up), Congress put this in place to protect young artists who signed away future best sellers or other creative for little or nothing. It’s a provision with a 35 year fuse. Called “termination rights,” the law reverts rights back to the author, meaning that works published in 1978 could soon (by now, when it is 2013) leave their publishers, or new contracts forced to be negotiated. Congress passed the copyright law in 1976, specifying that it would go into effect on Jan. 1, 1978, meaning that the earliest any recording or other creative work can be reclaimed is Jan. 1, 2013. But artists must file termination notices before the date they want to recoup their work, and once work qualifies for termination, its authors have five years in which to file a claim; if they fail to act in that time, their right to reclaim the work lapses.

As you can see from the previous sentence, with most things in life, Section 203 termination rights are not as simple as they appear.  To repeat, Section 203 provides that authors have a five-year period in which to exercise the right, but must also provide advance notice at least two years but no more than 10 years before the date of termination.

And any case exercising the right — if the publisher fights it — is unlikely to be clear-cut.

One particular issue is that the book cannot be considered a “work for hire”. A work made for hire is a work created by an employee as part of his or her job, or a work created on behalf of a client where all parties agree in writing to the work for hire designation. It is an exception to the general rule that the person who actually creates a work is the legally recognized author of that work. According to copyright law in the United States , if a work is “made for hire”, the employer—not the employee—is considered the legal author.

For sophisticated creators, this provision has been on the radar for a long time. The New York Times reported in 2011 that

“Bob Dylan has already filed to regain some of his compositions, as have other rock, pop and country performers like Tom Petty, Bryan Adams, Loretta Lynn, Kris Kristofferson, Tom Waits and Charlie Daniels, according to records on file at the United States Copyright Office.”


And yes, it applies to all works of authorship, whether musical compositions, books, or other works of authorship. The law gives leverage to creators, but most publishers (whether print or music) are likely not to be keen on just kicking back their rights. It’s a challenge in an already fluid sector. We will be following the issue closely here and here. More to come….