Jeff Koons: Copyright Infringement and Fair Use (Ch 8, 12)

On October 26, 2006 the Second Circuit decided the case Blanch v. Koons, --- F.3d ---, 2006 WL 30406666 (2d Cir. 2006). Professor Patry's discussion of the case is here. The Second Circuit affirmed the district court's grant of a summary judgment motion in favor of an artist, Jeff Koons, who had used a portion of a photograph from a fashion magazine in a large collage that he sold to the Guggenheim Museum for $2 million. Plaintiff complained of copyright infringement. Defendants moved for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure on the affirmative defense of "fair use." The "fair use doctrine" has been codified at 17 U.S.C. Section 107.

Fair Use Doctrine. 17 U.S.C. Section 107 provides "the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors." (emphasis supplied).

Applicable Rule of Procedure. Rule 56 of the Federal Rules of Civil Procedure (the "FRCP") governs motions for summary judgment. Rule 56(b) provides that a defendant may "at any time" move with or without supporting affidavits with or without supporting affidavits for summary judgment. Advisory Committee Notes to the FRCP amendments made in 1946 show that the rule was permitted to permit a defendant to move immediately, without waiting to assert an answer. The Rule 56 language that was deleted in 1946 required a defendant to wait until after it served an answer.

In Blanch v. Koons, the Second Circuit noted that although the "fair use" defense is a mixed question of law and fact, it has on a number of occasions resolved fair use determinations at the summary judgment stage where there are no genuine issues of material fact.

Practice Tip for Lawyers: Fair use cases require a careful analysis of the four factors enumerated in 17 U.S.C. Section 107. Spend some time reading the cases cited by the Second Circuit. As you may note, much of the material to be submitted to a court to analyze in support of or against a fair use defense is pretty much available at the beginning of a litigation. Courts take artists "reasons" for taking or using a work extremely seriously, along with discussions of actual and potential markets. Much of the rest is essentially eyeballing the work and forming some fairly subjective opinions. The Second Circuit quoted the reason WHY Koons used the image at length including the following "By using an existing image, I also ensure a certain authenticity or veracity that enhances my commentary - it is the difference between quoting and paraphrasing - and ensure that the viewer will understand what I am referring to." The bolded language is mine, and presents a powerful argument for copying someone else's work of visual art (or even music) that will be persuasive to judges. At the outset of a case turning on fair use, consider skipping discovery and simply putting together thoughtful and detailed affidavits to move under FRCP 56. As in Blanch v. Koons, you may just get rid of the case.

To purchase the Copyright Litigation Handbook (West 2006), please go here and use OFFER NUMBER 523571.

Constitutional Challenges to Copyright: A Litigation Explosion

Constitutional challenges to copyright have been rare over the 200-plus year history of copyright legislation in the United States. According to the panelists at yesterday's Columbia Law School symposium "Constitutional Challenges to Copyright" - the challenges to the constitutionality of copyright that started 10 years ago - are not likely to abate.

I recently received an inquiry from a potential client. A couple of eighty-something grandparents in Texas were getting sued because their sixteen-year old grand-daughter had apparently downloaded music without their knowledge. Their internet account activity had been subpoenaed without their knowledge in the Southern District of New York. The amounts involved put them in fear of losing their house.

This was not the first time my office received a call like this and I'm sure it won't be the last. But the civil and criminal penalties accompanying copyright infringement, together with a deep clash in cultural values caused by technological and economic change ensure that the constitutionality of copyright protections will continue to be a hot-button topic. The Columbia symposium, organized by Professor June Besek - provided a valuable resume of where we've been and a roadmap of where the future is likely to go.

The fiercest debate arose over the "public domain" - with Professor Chris Sprigman of the University of Virginia facing heat from publishing industry skeptics from the audience over his contention that the "public domain" had a constitutional grounding. Sprigman said he believed that the Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) was one of the most important decisions for copyright, given its affirmation of the public domain and the right to use public domain works without attribution. When Sprigman advanced an "implied" public domain theory created in 1789 when the first Copyright Act was adopted, the audience was practically shouting. Heady stuff!

In Chapter 12 of Copyright Litigation Handbook, I wrote "Public domain works are works that may be used without payment, without attribution, and without permission." I cited Dastar, a unanimous decision written by Justice Scalia for that proposition. I recall that my editor asked me why I was citing a Lanham Act case for a basic copyright proposition. I responded that it was the only place I could find it! The Supreme Court's statement of the public domain is ethically horrifying to academics, because it "legalizes" plagiarism. But it should be studied carefully, because at least one panelist used "plagiarism" as a synonym for "copyright infringement". I can use a public domain translation of Aristotle as my own quite legally. My failure to attribute the quote, however, would correctly subject me to the academic and ethical charge of plagiarism.

I suspect that the theoretical underpinnings of the public domain may be grounded in the Eleventh Amendment and the basic common law proposition that you are free to copy anything that the law does not forbid you to copy or to communicate in any ways not prohibited by law. Poetry was near to the hearts of our Founding Fathers and I doubt they expected that a poet would expect compensation for a poetry reading, which was a popular pastime. Today's rappers have a different set of expectations.

To purchase the Copyright Litigation Handbook (West 2006), please go here and use OFFER NUMBER 523571.

Defense of Equitable Estoppel in Copyright Litigation (CLH Ch 12)

Last weekend's visit to the Sagamore for the annual meeting of the New York State Bar Association's IP Law Section was well worth it. My publisher West arranged for a book signing. Special thanks to Debra Resnick of FTI Consulting, Joyce Creidy of Thomson Compumark, Marc Lieberstein of Pitney Hardin and Cathy Teeter of NYSBA for the warm welcome and the kind patronage. The Copyright Litigation Handbook t-shirts were a big hit, and several bar associations expressed interest in having me speak to their members.

On September 21, 2006, Judge Cedarbaum in the Southern District of New York made an interesting decision involving Ian Fleming's Chitty Chitty Bang Bang. Legislator 1357 Ltd v. Metro-Goldwyn-Mayer Inc., 2006 WL 2709783. Fleming wrote it just before he died. Before he died, he assigned the publishing and film rights to it to separate trusts, but the story was not published prior to his death. Later, a film was based on this short story. A film based on a copyrighted work is known as a "derivative work".

Judge Cedarbaum's decision decides fascinating issues of whether the short story was "posthumous" and interpretes the Copyright Act's provisions on heirs recapturing copyrights. Professor Patry has discussed those elements of the decision here. I would like to focus on that portion of the opinion discussing the defense of equitable estoppel. My recently-published Copyright Litigation Handbook discusses equitable estoppel in Chapter 12 "Answer and Defenses". Judge Cedarbaum carefully distinguishes between the defenses of laches and estoppel and notes that it is an open question whether or not the defense of laches is available in the Second Circuit.

Overview: Rule 12(b)(6) of the Federal Rules of Civil Procedure (FRCP) requires that certain defenses be asserted in the answer to a complaint, except for certain defenses that may be asserted in a motion, at the option of a pleader. Rule 8(c) of the FRCP provides the checklist of such defenses and specifies estoppel. The motion for partial summary judgment before Judge Cedarbaum was made under FRCP 56 which requires the court to examine all admissible evidence to determine whether "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." (citations omitted).

Decision: Plaintiffs moved for partial summary judgment. Defendants resisted, based on a defense of laches. The court found that defendant's laches arguments raised instead a "genuine issue of disputed fact" (and therefore a potentially valid defense of equitable estoppel) due to representations by plaintiffs after Fleming's death and lengthy delay in filing the action, as well as defendants' good-faith belief that plaintiffs viewed them as the owners of the film rights in the Work. The court noted that the defense of equitable estoppel applies when "the party to be estopped had knowledge of defendant's infringing conduct, and either intended that his own conduct be relied upon or acted so that the party asserting the estoppel has a right to believe it was so intended. Additionally, the defendant must be ignorant of the true facts and must rely on plaintiff's conduct to his detriment." Additionally "[u]nlike laches, equitable estoppel can be used to prevent a plaintiff from recovering prospective as well as past damages." (citations omitted).

The court contrasted a line of case law permitting equitable estoppel in copyright cases with a line of cases rejecting laches as the equitable equivalent of a statute of limitations, and noting a three-way split in the various circuits on whether and how the laches defense is available, together with a discussion of the Second Circuit cases showing that the Second Circuit hasn't reached the question.

Practice Tip for Lawyers: Judge Cedarbaum's opinion provides a strong hook for defendants who can present solid evidence that they have published believing in good faith that they were entitled to do so. It also serves as a warning to defendants in copyright litigation that careful pleading of defenses is essential. At least in the Second Circuit, equitable estoppel may provide the most powerful defense.

To purchase the Copyright Litigation Handbook (West 2006), please go here and use OFFER NUMBER 523571.

New York State Bar Association IP Law Section Book Signing

The New York State Bar Association IP Law Section has invited me to its annual meeting at the Sagamore Hotel on Lake George to do a book signing. My publisher, West has sponsored the coffee break, and I'll be signing books and meeting and greeting there. You can find the meeting program, which runs from October 12-15 here. Auspiciously, my very first book signing is scheduled on Friday the 13th. West will be raffling off an Ipod to celebrate the occasion, so make sure to stop by and say hello.

The IP Law Section has over 2,000 members and is one of the fastest-growing sectors of the New York State Bar Association, so this is quite an honor. The program looks diverse and stimulating, so I look forward to picking up my 9.5 CLE credits while enjoying the foliage.

I plan to visit other bar associations and trade organizations to give CLE programs and member education programs. I welcome invitations to speak or to participate in a panel.

If you can't make the book signing, you can still order the Copyright Litigation Handbook directly from West here. Please use OFFER NUMBER 523571.

Copyright Litigation Handbook - Summary of Contents

My new book: Copyright Litigation Handbook covers the following topics:

Ch 1. Copyright Law: A Litigation Perspective
Ch 2. The Client Interview and Initial Investigation
Ch 3. The Copyright Office: A Litigation Perspective
Ch 4. Calculating Dates Prior To Commencing Litigation
Ch 5. Cease and Desist Letters and Declaratory Judgment Actions
Ch 6. Drafting the Infringement Complaint
Ch 7. Copyright Ownership and Licensing Litigation
Ch 8. Motions Attacking the Complaint
Ch 9. Removal from State Court and Preemption
Ch 10. Class Actions
Ch 11. Injunctions and Seizures
Ch 12. Answers and Defenses
Ch 13. Discovery
Ch 14. Evidence and Experts
Ch 15. Jury Instructions
Ch 16. Damages and Profits
Ch 17. Costs and Attorneys Fees

The appendices include the Copyright Act, the Federal Rules of Civil Procedure and the Federal Rules of Evidence and a number of forms. It's a paperback meant to be kept deskside or tossed in a briefcase to bring to the courtroom or conference room as a quick reference for client counseling or finding answers for the litigator under time pressure.

When ordering it here, please use Offer number 523571.

Copyright Litigation Handbook - Available For Purchase

Copyright Litigation Handbook(2006) is now available for purchase through Thomson West online by clicking here. My full author bio is available here. Please use the OFFER NUMBER 523571 when ordering, or when you ask your law firm's librarian to pick up a copy.

I hope that purchasers of the work will give me constructive feedback to enable me to better serve readers of future editions. I plan to post on developments in copyright litigation here and to share some thoughts on the Federal Rules of Civil Procedure, the Federal Rules of Evidence and litigation tactics and strategy.