Court rules Andy Warhol's Prince Portraits are fair use

On the left:  Prince, Lynn Goldsmith, 1981; on the right: Prince, Andy Warhol, 1984

The US District Court, Southern District of New York, on July 1 ruled that Warhol's 1984 "Prince Series" do not infringe Lynn Goldsmith's copyright on a Prince's photograph shot in 1981 for Newsweek and never published.

In October 1984, Vanity Fair licensed for 400 dollars one of Goldsmith's black-and-white studio photographs of Prince by her agency, while the photographer did not know that her work had been licensed for use as an artist's reference. Indeed, Vanity Fair commissioned Warhol to create an illustration of Prince titled "Purple Fame", which was published in the November 1984 issue of the magazine. The article contained a copyright attribution for the portrait making reference to the Goldsmith's source photograph. Based on the Goldsmith's Prince photograph, Warhol created also the Prince Series, comprised of sixteen works: twelve silk-screen paintings, two screen prints on paper and two drawing. Twelve of the sixteen works were then auctioned or sold; all works were licensed for use in books, magazines, newspaper and merchandising purposes.   

After Prince died on April 21, 2016, Vanity Fair republished an online copy of its November 1984 "Purple Fame" article, crediting Warhol and Goldsmith for the Prince illustration in the article, beside publishing a commemorative magazine using one work of Warhol's Prince Series as magazine's cover, crediting only Warhol and not Goldsmith. 

In July 2016, Goldsmith started complaining with the Andy Warhol Foundation that Warhol's Prince Series infringed upon the copyright associated with her photograph, demanding the Foundation to pay a substantial sum of money and threatening to sue if the Foundation refused.

The Foundation preemptively sued Ms Goldsmith and her company in 2017 seeking a declaratory judgement that the works based on Goldsmith's photograph do not constitute copyright infringement, being dissimilar to the Goldsmith Prince photograph and, in any event, that the series is protected by fair use doctrine. In addition, the Foundation raised also a statute of limitation defense, arguing that the three-year statute of limitation barred the defendant's claim. Goldsmith responded with a counterclaim for copyright infringement. 

The Court did not evaluate all parties' claims, focusing on whether that Prince Series were protected by fair use applying the four-factor test.

As to the first factor i.e. the purpose and character of the use, the Court found that the Prince Series works can be considered sufficiently transformative. Whereas Goldsmith's photograph centered on helping Prince to reveal his identity of vulnerable and uncomfortable person, Warhol's Series created an  "iconic, larger-than-life figure" of the singer using unrealistic colors, employing a new aesthetic and conveying a new artistic message. Furthermore, each work of the Prince Series is immediately recognizable as a "Warhol" and not as real photograph.

As to the second factor, that is the nature of the copyrighted works, the Court ruled that its significance - as for the first factor - is diminished when the secondary work uses the copyrighted work for a transformative purpose as in the case at issue.

With reference to the third factor, i.e.  the amount and substantiality of the portion used in relation the copyrighted work as a whole, the Court observed that Warhol removed all protectible elements of Goldsmith's photograph in creating his Series. Indeed, he used only a portion of Goldsmith's photograph that is Prince's head; employing sharp contours of Prince's face and bright colors instead of black and white, giving a flat, two-dimensional effect rather than the three-dimensional one of the source photograph. 

As to the final fair use factor i.e. the effect of the use upon the potential market for or value of the copyrighted work, the Court inquired whether Warhol's Prince Series usurped the market for potential derivative works of Goldsmith's photograph. The Court found that the licensing markets of the two artists are very different and the Prince Series works cannot be considered as market substitutes that have harmed, also potentially, Goldsmith's market.  

The Court granted the Foundation's motion for summary judgement, dismissing Goldsmith's copyright infringement counterclaim. Goldsmith's lawyer said to New York Times that she was very disappointed from the fair use finding, hoping that the appeal will be more successful. 

Andy Warhol Foundation Asks SDNY to Declare Prince Series Not Infringing

The Andy Warhol Foundation for the Visual Arts filed this month a suit against photographer Lynn Goldsmith asking the Southern District of New York Court (SDNY) to declare that the Andy Warhol Prince Series did not infringe on Defendant’s copyright, that the portraits in the series are transformative works protected by fair use, and that Defendant’s claim is barred by the equitable doctrine of laches. The case is The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith, Ltd., 1:17-cv-2532.

Andy Warhol died in 1987, and his will directed that almost all of his estate should be used to create a foundation dedicated to the “advancement of visual arts.” Andy Warhol Foundation for the Visual Arts was created in 1987, and, around 1994, took ownership of all copyrights and trademarks owned by Andy Warhol at the time of his death.

Defendant photographed in 1981 musical artist Prince, aka the Artist Formerly Known as Prince, or the Artist. The photograph shows Prince facing the viewer, wearing a white shirt and suspenders. Only the top part of his pants are shown.

Andy Warhol created a whole series of portraits of Prince (the Prince Series), using his famous silkscreen printing technique, which he also used for his Marilyn Monroe portraits. The Prince Series “were inspired by [Defendant’s] photograph” (Complaint p. 13). The different portraits which are part of the Prince Series are variations of the same image, the face of Prince, detached and seemingly floating over a single color background, looking toward the viewer.

Andy Warhol, Prince (1984) Copyright AWF

Defendant licensed the photograph in 1984 to monthly magazine Vanity Fair, to be published in the November 1984 issue. One of the portraits of the Prince Series by Warhol was also published in Vanity Fair in its November 1984 issue.

Defendant contacted the Foundation for the first time in July 2016. Prince had died on April 21, 2016, and one of the portraits of the Prince Series was used for the cover of The Genius of Prince, published by Condé Nast in May 2016 to commemorate the musician’s life and works. Defendant “demanded that the Foundation pay a substantial sum of money and threatened to sue if the Foundation refused” (Complaint p.24).

Plaintiff filed suit, asking the SDNY to declare that the Prince Series does not infringes Defendant’s copyright, and that the portraits are a fair use of Plaintiff’s photograph.

Is the Prince Series Transformative? (First Fair Use Factor)

The Complaint concentrates on two of the fair use factors, the first factor, the purpose and character of the use and the fourth factor, the effect of the use on the potential market.

In 2013, the Second Circuit Court of appeals held in Cariou v. Prince that twenty-five of Prince's artworks were fair use because of their “entirely different aesthetic from Cariou's photographs.” In this case, Richard Prince, the appropriation artist, not the Artist formerly known as Prince, had used several photographs created by Patrick Cariou to create his Canal Zone series.

 Indeed, the more transformative is a use of a work, the more likely will it be protected by fair use. In our case, the Andy Warhol Foundation is claiming that the Prince Series “transforms the aesthetic and meaning of the Prince Publicity Photograph” and lists a series of examples showing how the Prince Series visually differs from the photograph (Complaint p. 14 to 17).

The Complaint notes, for example, that the portraits in the Prince Series focuses on the face of the subject, whereas the photograph shows Prince below the waist. The photograph shows Prince’s natural colors, whereas the portraits of the Prince Series use “unnatural neon colors.” Prince’s eyes are more heavily made-up in the Prince Series, the angle of the face differs from the angle of Prince’s face in the photograph, and the light reflected on Prince’s face in the photograph does not appear in the portraits made by Warhol.

Plaintiff argues that Warhol’s works are even more fundamentally different from the photograph, beyond mere visual differences, because the painting in the Prince Series “may reasonably be perceived as simultaneously honoring the celebrity of Prince while also conveying that Prince (like Marilyn Monroe and many other subjects of Warhol’s works) is a manufactured star with a stage name, whom society has reduced to a commodity” (Complaint p. 18). The essence of the Prince Series, a comment, is different than the original photograph, which was a publicity photograph.

Does the Prince Series Usurp the Market of the Photograph? (Fourth Fair Use Factor)

Plaintiff also argue that Warhol’s works and Defendant’s work do not target the same audiences, nor do they target the same art collectors or the same commercial markets. Andy Warhol’s works are “primarily sold to collectors of high-end Pop Art” (see here), which is not the case for the photograph (p.19).

Is the Copyright Claim Against the Foundation Barred by Laches?

Laches is an equitable defense where the defendant (or, in our case, the plaintiff seeking declaratory judgment) claims that the other party commenced suit with an unreasonable and prejudicial delay. The Warhol Foundation claims that Defendant should have known about the Prince Series after Vanity Fair published one of the Prince portraits in November 1984, because “[a]ny reasonable person in Defendant’s position would have reviewed the November 1984 issue of Vanity Fair, if only to confirm that Vanity Fair had complied with the license terms described above” (Complaint p. 20).

Since Defendant failed to timely file a copyright infringement suit, she prevented the Foundation to be able to defend itself, as Andy Warhol had died in 1987, three years after Defendant should have known about the Prince Series. Documents pertaining to the dispute may have been lost ordestroyed, and thus, as claimed by Plaintiff, the evidentiary record “has become prejudicially stale” (Complaint p.28).

The case is interesting, but likely to settle or be dismissed, and thus may not become a famous copyright case, even for 15 minutes.

Prince vs Jay Z - the streaming war begins

A court battle over the streaming rights to Prince's back catalogue is looming after the late singer's estate filed a claim in the US courts against Jay Z's Roc Nation and the TIDAL streaming service.

The action on behalf Prince's estate, fronted by NPG Records, claims that Roc Nation and TIDAL is streaming more than a dozen of the star's albums without permission.  The lawsuit, filed in the U.S. District of Minnesota court also names NPG Publishing as a plaintiff.

The law suit claims damages, and demands that unlicensed material be taken down: “Roc Nation to account for and pay to Plaintiffs their actual damages in the form of Roc Nation’s profits and Plaintiffs’ damages, or… statutory damages up to the maximum amount allowed for wilful infringement of copyright”.

Prince removed most of his back catalogue from streaming sites including Spotify, Google Play and Apple Music in July 2015. A month later, he released a new album, HitNRun: Phase One exclusively on TIDAL.

TIDAL claims it has licences, "both oral and written", for a wide range of material and “the right to exclusively stream [Prince’s] entire catalogue of music, with certain limited exceptions”. in a statement at the time if the 2015 release, the star praised TIDAL's artist-centric business model, saying it would allow him and his associated acts "to continue making art in the fashion we've grown accustomed 2 [sic]". The NRG claim alleges that a ‘Letter of intent’ was signed by NPG on August 1 last year giving TIDAL permission to stream Prince’s last studio album, Hit N Run: Phase 1 – with an exclusivity period of 90 days. 

However the lawsuit claims TIDAL has gone far beyond any permissions granted, According to the  NPG lawsuit, TIDAL “began exploiting some of these works after Prince’s death and on or about June 7, 2016” without permission and that  the company has repeatedly failed to submit documented evidence that show it has written consent to host the tracks.

https://www.theguardian.com/music/2016/nov/16/prince-estate-sues-tidal-music-access-jay-z

Image of Jay Z by Nick Cordes

The CopyKat - appealing to copyright fans far and wide!

The Shaghai Daily tells us that China's copyright regulator has strengthened its law enforcement policy against alleged piracy in cloud-storage services, which, despite a previous crackdown, "had long provided Internet users a covert channel to download movies and TV series." As part of the 'Sword Net' initiative, cloud-storage services have been ordered to prevent users from uploading, storing or sharing files that may infringe copyright, pursuant to a regulation from the National Copyright Administration (NCA) dated October 14th 2015. The new move was published after a meeting Tuesday attended by leading online data hosting services such as Baidu, Qihoo360, Tencent and Huawei. The new regulation means that cloud service providers must deal wuth those copyright offenders by putting them on blacklist, or suspending or terminating their services. Service providers should also notify copyright holders how to lodge complaints, and commit to handling complaints in a timely manner.

An Illinois couple who own several recording companies specializing in doo-wop, jazz, and rhythm and blues have filed law suit against the major satellite and Internet radio companies in the US over their playing of pre-1972 songs. Following on from the actions from Flo & Eddie of the Turtles and and RIAA, it's the third lawsuit that seeks to obtain payment for use of sound recordings under state copyright laws. Arthur and Barbara Sheridan filed two lawsuits in New Jersey federal court: one against Pandora and Sirius XM (PDF) and another against iHeartMedia (PDF), the parent company of online music service iHeartRadio. Their lawsuits seek class action status, looking to represent owners of pre-1972 songs. The action says that the companies have derived "significant benefits," including "millions of dollars in annual revenue," by playing those songs without permission, the suit alleges. In an action brought by ABS Entertainment, which owns the recordings of Al Green, among others, terrestrial radio broadcaster CBS has argued that not only does state law not apply to their use - a matter the recorded music industry had until recently accepted this interpretation of the law - CBS also says that as it only plays re-mastered versions of pre-1972 sound recordings, these actually have a post 1972 copyright copyright saying "In fact, every song CBS has played in the last four years has been a post-1972 digital sound recording that has been re-issued or re-mastered".  Meanwhile Pandora has confirmed that it has reached a settlement with the major labels over its use of pre-1972 sound recordings. The streaming platform follows the lead of US satellite radio service Sirius which, back in June, agreed to pay $210 million to the three majors - Universal, Sony and Warner - and ABKCO Music, which is best known for controlling the early Rolling Stones catalogue, with Pandora paying the labels $90 million for past and future usage of pre-1972 repertoire More on ArtsTechnica here and the Hollywood Reporter here.

Adolf Hitler's ‘Mein Kampf”  falls out of copyright next year when the term of the copyright, owned by the State of BAvaria, expires. is almost certainly going to re-published and it seems annotated German and French reprints are being prepared. Last week a Paris publisher, Fayard, confirmed in a statement it was going ahead with an annotated French print, after pondering on it for the past four years. A German-language reprint will be handled by the government-funded Institute of Contemporary History in Munich, which emphasizes the book’s historical importance. It too, will be annotatated. More on the Times of Israel here.

The Supreme Court of India has held that no copyright exists on the "title" of a literary work, reversing the decision of the Bombay High Court: "No copyright subsists in the title of a literary work and a plaintiff or a complainant is not entitled to relief on such basis except in an action for passing off or in respect of a registered trademark comprising such titles. The Times of India has more.

The 'Dancing Baby' case is not over - with BOTH sides aiming for a rehearing: Whilst at the time of the appelate court's judgement, the EFF called it “an important win for fair use,” but now both the EFF (which is representing the plaintiff, Stephanie Lenz, who filmed her then toddler dancing to Prince's "Let's Go Crazy" ) and Universal Music Corp. have requested an en banc rehearing from the Ninth Circuit. It seems the EFF are looking to strengthe the case for 'fair use' by breathing new life in section 512(f), which allows the targets of illegitimate takedowns to sue the people who sent the invalid notices - potentially arguing that on the facts of this case, Universal could not possibly have acted in 'good faith' when issuing a DMCA takedown' notice  The Universal petition claims that Lenz had no standing for an appeal in the first place because she was not injured by the takedown. UMG will also ask the court to clarify some of the language in the opinion.

Jay Z at Glastonbury 2008 (Nick Cordes)

US district judge Christina Snyder has abruptly dismissed the lawsuit against Jay Z and his producer Timbaland before it went to a jury at a federal court in Los Angeles, ruling that Osama Ahmed Fahmy, the heir of an Egyptian composer Baligh Hamdy, lacked the right to pursue a copyright infringement claim against Jay Z's Big Pimpin in a case that looked at copyrights, moral rights and chain of title. After hearing from experts in Egyptian law, The judge ruled that Egyptian law did not apply and that the case should not go to a jury. “Fahmy lacked standing to pursue his claim. In light of that decision, it will not be necessary to submit to the jury whether Big Pimpin’ infringed Khosara Khosara,” she said. The plaintiffs have said they will file an appeal

Prince and Universal wrong to take down that 'dancing baby'

Prince: the 1988 Lovesexy Album

In an important decision, and one which will undoubtedly have an impact on how content owners deal with what they consider is infringing content on the likes of YouTube, the Universal Music Group have been told by the U.S. appellate court that they should have considered whether a woman’s 29-second video of her two kids dancing to Prince’s “Let’s Go Crazy” was a fair use before issuing a takedown notice to YouTube.

Cast your minds back to 2007 and you might remember that Prince persuaded Universal, his publisher, to take down a slightly blurry user generated video on YouTube of a toddler dancing to a snippet from “Let’s Go Crazy”. The mum who uploaded the video, Stephanie Lenz, was not amused. Prince had publicly said in a September 2007 statement that he intended to “reclaim his art on the internet” and Lenz was put on notice that her use of Prince’s music violated the U.S. Digital Millennium Copyright Act, and that if she violated it again, she could lose her YouTube account and any videos she’d uploaded to it. Lenz sent a counter notification, and YouTube eventually reinstated the video that year.

Lenz then  sued Universal Music, arguing that entertainment company misrepresented the basis for its takedown request, saying the Universal had clearly not considered fair use, suggesting that her “use of the Prince song ‘Let’s Go Crazy’ is a self-evident non-infringing fair use” and “(T)he Holden (Lenz's son) Dance Video non-commercially transforms the song into partially obscured background music for a family video about a toddler just learning to dance, uses only a small, non substantial portion of the original work, and does not substitute for the work or harm any market for the work”.

In 2012 in the San Jose Federal Court, U.S. District Judge Jeremy Fogel refused to dismiss the case – or hand Lenz a victory – without a trial and that Lenz might persuade a jury in her claims that Universal showed wilful blindness to the possibility of fair use, and that fair use was self-evident. The Judge also considered Universal’s position, saying that equally they could explain their position to a jury and explain that there was no bad faith and Universal “lacked the subjective intent to misrepresent the reasons it asked YouTube to take down the video.”

The case then reached a three-judge panel of the 9th Circuit Court of Appeals: Last month we reported that U.S. Circuit Judge Milan Smith said the concept of fair use is an integral part of the language of the DMCA, roundly criticising the music company saying: “I struggle with how anyone looking at this from Universal’s perspective would doubt that little children playing and dancing around to music by the artist formerly known as Prince could view it as anything other than a fair use.” U.S. Circuit Judge Richard Tallman looked at the arguments put forward by Lenz’s lawyer (Corynne McSherry, of the Electronic Frontier Foundation) who had suggested that under the DMCA, Universal needed to come to a legal conclusion about fair use before it issued a takedown notice. Judge Tallman said the court was struggling with whether the video was fair use – although McSherry’s point was that whether or not the use was fair use – Universal hadn't even considered this before issuing a takedown notice.

The appellate court has now concluded that “the statute [DMCA] requires copyright holders to consider fair use before sending a takedown notification, and that failure to do so raises a triable issue as to whether the copyright holder formed a subjective good faith belief that the use was not authorized by law.” The court held that “fair use is not just excused by law, it is wholly authorized by the law.” They called Universal Music’s argument “incorrect” — that fair use was not authorized by the law because it is an affirmative defense that excuses otherwise infringing conduct. 

At the heart of the argument was Section 512(c)(3)(A)(v) of the DMCA which states that, as part of the written notice, a statement must be made by the copyright owner that it 
"has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. " The dispute between the parties was whether fair use is an "authorization" under the law as envisaged by the DMCA.  The Court of Appeals agreed with the district court that the "statute unambiguously contemplates fair use as a use authorized by the law". Annsley Merelle Ward has written an excellent piece on the IPKat on this case which you can find here.

The judges wrote that Lenz may recover nominal damages “due to an unquantifiable harm” from the Universal Music takedown, although those damages cannot be collected on claims of impairment of free speech rights. The total of the damages, including the recovery of expenses and attorneys’ fees, would be determined at a trial.

Corynne McSherry, the attorney at the Electronic Frontier Foundation who represented Lenz, told the WSJ Law Blog that the “ruling sends a strong message that copyright law does not authorize thoughtless censorship of lawful speech.”

Then toddler Holden is nearly 10 years old now.

http://blogs.wsj.com/law/tag/universal-music/

http://www.npr.org/sections/thetwo-way/2015/09/14/440363919/dancing-baby-wins-copyright-case

http://www.musiclawupdates.com/?p=6428

http://the1709blog.blogspot.co.uk/2012/10/is-dancing-baby-takedown-notice-abuse.html

And see the interesting article in the Music Business Journal by Serona Elton here

Prince and the Toddler - a universal case of forgotten fair use?

Prince: the 1988 Lovesexy Album

Cast your minds back to 2007 and you might remember that Prince (or even 'The Artist Formerly Known as Prince')(or 'Squiggle' being more unkind)(or Prince Roger Nelson, the 58 year old rock star) persuaded his publisher, Univeral Music, to take down a slighly blurry user generated video on YouTube of a toddler dancing to a snippet from his song (and recording) "Let's Go Crazy". The mum who uploaded the video, Stephanie Lenz, was not amused. 

In fact Prince had publicly said in a September 2007 statement that he intended to "reclaim his art on the internet".

Lenz was put on notice that her use of Prince's music violated the U.S. Digital Millennium Copyright Act, and that if she violated it again, she could lose her YouTube account and any videos she'd uploaded to it.

Now the case has reached the Ninth Circuit Court of Appeals in a case that has all the trappings of the a PR fiasco for the Purple One: "The video bears all the hallmarks of a family home movie," court documents said. "[I]t is somewhat blurry, the sound quality is poor, it was filmed with an ordinary digital video camera, and it focuses on documenting [Lenz's son] Holden's 'dance moves' against a background of normal household activity, commotion and laughter." The entire "performance" lasted 29 seconds, with "Let's Go Crazy" heard for about 20 of them, the documents state. Lenz posted the video on YouTube to share it with family and friends, particularly her mother (Holden's grand mother)  in California.

Following the procedures set out in the DMCA, Lenz requested that YouTube repost the video, which was called "Let's Go Crazy #1," and she sued Universal Music, arguing that entertainment company misrepresented the basis for its takedown request, saying the Universal had clearly not considered fair use, suggesting that her "use of the Prince song 'Let's Go Crazy' is a self-evident non-infringing fair use" and "(T)he Holden Dance Video non-commercially transforms the song into partially obscured background music for a family video about a toddler just learning to dance, uses only a small, nonsubstantial portion of the original work, and does not substitute for the work or harm any market for the work". Coincidentially the use of the word 'transforms' brings to mind yet another Prince - Richard Prince - the 'appropriation artist' who has been on the recieving end of a number of lawsuits for his 'transformative art - and a fascinating look at fair use by the U.S. Court of Appeals for the Second Circuit  (see Cariou v Prince).

In 2012 in the San Jose Federal Court, U.S. District Judge Jeremy Fogel refused to dismiss the case - or hand Lenz a victory - without a trial and considered that Lenz might persuade a jury in her claims that Universal showed willful blindness to the possibility of fair use, and that fair use was self-evident. The Judge also considered Universal's position,saying that equally they could explain their position to a jury and explain that there was no bad faith - and Universal "lacked the subjective intent to misrepresent the reasons it asked YouTube to take down the video."

Universal appealed and Lenz cross appealed to the Ninth Circuit. In brief, it's not been a great case for Universal and the Purple One so far - but it's not over yet.  U.S. Circuit Judge Milan Smith said the concept of fair use is an integral part of the language of the DMCA, roundly criticising the music company saying: "I struggle with how anyone looking at this from Universal's perspective would doubt that little children playing and dancing around to music by the artist formerly known as Prince could view it as anything other than a fair use." U.S. Circuit Judge Richard Tallman looked at the arguments put forward by Lenz's lawyer (Corynne McSherry, of the Electronic Frontier Foundation) who had suggested that under the DMCA, Universal needed to come to a legal conclusion about fair use before it issued a takedown notice. Judge Tallman said the court was struggling with whether the video was fair use - although McSherry's point was that whether or not the use was fair use - Universal hadnt even considered this before issuing a takedown notice.
     
The case continues: Judge Tallman adjourned with a warning that a ruling may take a while, and that the court would "puzzle" over the issues.

http://www.entlawdigest.com/2015/07/08/3903.htm

Cariou v Prince  11-1197-cv (2d Cir. April 25, 2013)

Lenz v. Universal Music Corp

Prince Sues Twenty Two Fans For Linking to Infringing Content

Pop idol Prince caused controversy last week when he initiated a copyright action against twenty two fans. The defendants in question had created fan websites dedicated to the musician through the use of platforms like Facebook and Blogger. Prince alleges that the defendants used these websites to post links to torrent sites where recordings of his concerts could be downloaded for free.  He is seeking $1 million in damages from each defendant, only two of which are identified by name (the others remaining as John Doe defendants).

According to Prince, the defendants' websites constitute "an interconnected network of bootleg distribution which is able to broadly disseminate unauthorized copies of Prince’s musical compositions and live performances" and accordingly their actions amounted to "massive infringement and bootlegging" of copyrighted material.

Fans have expressed their shock at Prince’s decision to sue his own fan-base. At the fan-based web forum Prince.org, fans left messages such as: "Yes bootlegging is wrong, but … who is next? Dude will even go after regular ass fans … really sad," and "Prince will be remembered for making some of the most beautiful music ever created and for hating his fans." Many will no doubt be aware that Prince has track record of copyright litigation. This included an unsuccessful legal action brought against the Pirate Bay in 2007.  

Cariou v Prince: a question of Rastafarians and fair use

This week the US Court of Appeals for the 2nd Circuit decided that use of certain photographs in a new piece of art did not necessarily infringe copyright in the photographs as the use could be transformative and therefore fair.

The claim was bought by Cariou, a professional photographer who, over the course of six years in the mid-1990s, lived and worked among Rastafarians in Jamaica. The relationships that Cariou developed with the Rastafarians allowed him to take a series of photographs that Cariou published in 2000 in a book titled Yes Rasta.

Richard Prince, an "appropriation" artist (the Tate Gallery has defined appropriation art as "the more or less direct taking over into a work of art a real object or even an existing work of art."), first came across a copy of Yes Rasta in a book shop in St Barth's in 2005. Between December 2007 and February 2008, Prince had a show at the Eden Rock hotel in St. Barth’s that included a collage comprising 35 photographs torn out of Yes Rasta and pinned to a piece of plywood. Prince altered the photographs significantly, by painting “lozenges” over their subjects’ faces and using only parts of some of the images. In June 2008, Prince went on to buy another three copies of Yes Rasta and to create thirty additional works of art in a similar vein.

Understandably Cariou was none to pleased and the question of whether Prince infringed copyright in the photographs has been bouncing around the US courts since 2011. The question was whether Prince's use of the photographs was fair use, and in particular whether it was transformative. The Court of Appeals has now held that it can be, saying:

"Here, our observation of Prince's artworks themselves convinces us of the transformative nature of all but five, which we discuss separately below. These twenty-five of Prince's artworks manifest an entirely different aesthetic from Cariou's photographs. Where Cariou's serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince's crude and jarring works, on the other hand, are hectic and provocative."

The court found that the five other works were so minimally altered by Prince that they might not be considered fair use by a "reasonable observer". Those were sent back to the lower court for a determination using the appeals court standard for transformative use.

This case is likely to provoke strong views on whether it should be permissible to use part of a photograph in a piece of art without the photographer's consent, even if part of the photo is modified. The real criticism of this case however is that it does not provide much clarity on the murky concept of "transformative use".

The full decision is available here.

How will South Korea Implement fair use?

In 2012, the Korean Copyright Act was amended to include the general provision of a fair use. The newly introduced article 35-3 (Fair Use of Copyrighted Material)  states that 

“the copyrighted work may be used, among other things, for reporting, criticism, education, and research.”  

Article 35-3.2 lists factors to be used to determine if a use is fair (which seem similar to the fair use factors listed in section 107 of the U.S. Copyright Act): 

"In determining whether art. 35-3(1) above applies to a use of copyrighted work, the following factors must be considered: the purpose and character of the use, including whether such use is of a commercial nature or is of a non profit nature; the type or purpose of the copyrighted work; the amount and importance of the portion used in relation to the copyrighted work as a whole; the effect of the use of the copyrighted work upon the current market or the current value of the copyrighted work or on the potential market or the potential value of the copyrighted work."

But as a new provision there are, of course, no precedents to guide those wanting to rely on fair use in Korea - as yet - but there have been a number of decisions  concerning Article 28 of Korean Copyright Act (Quotations from Work Made Public) which has been used to recognise exceptions and limitations to Copyright. By way of reference, Article 28 provides:

"It shall be permissible to make quotations from a work already made public; provided that they are within a reasonable limit for news reporting, criticism, education, and research, etc. and compatible with fair practices."

Two leading Korean cases concerning Article 28 could well have an impact on the futire of  fair use. The first concerns a search engine that provided thumbnail images. In that case, The Supreme Court of Korea [Supreme Court of Korea, Decision 2005 Do 7793 (2006)] held that the use of the images were within the meaning of "fair practices" pursuant to Article 28.  The Court found that, to determine whether a particular use is compatible with fair practices, courts should consider various factors including the purpose of the use, the type of the copyrighted work, the content and the amount of the portion used, and whether the copyrighted work could replace the demand of the original work

The second case concerns user generated content (“UGC”). Here the plaintiff uploaded a recording of his 5 years old daughter singing and dancing of the popular Korean song ‘Crazy,’ by Son Dam Bi, to his blog.  The internet blog provider, the defendant in the case, blocked the Plaintiff's blog at the request of the Music Copyright Association of Korea, a second defendant.  The court [Seoul Southern District Court, Decision 2009 GaHap 18800 (2010)] held that the plaintiff should be allowed to upload the content pursuant to Article 28, and citing an earlier Supreme Court decision [Supreme Court of Korea, Decision 97 Da 34839 (1998)] the District Court found that the purpose of quotation cannot be limited to news reporting, criticism, education, and research. 

The case somewhat reminded me of the 2007  ''Prince v Dancing Baby" case in the USA where Universal Music received much criticism for attempting to sue a mother who uploaded a clip of her baby dancing to Prince's 'Lets Go Crazy' onto YouTube. UMC issued a takedown notice for infringement of their sound recording rights, but in 2010 a District Court granted partial summary judgment to the mother allowing fair use -saying that UMC should have considered this before issuing a takedown notice, and would have to show bad faith to prevail, 

The Korean precedents perhaps indicate that the courts in Korea might well be prepared to adopt a flexible approach to the new exceptions to copyright - hopefully moulding the new legislation into a workable framework for the digital age.

Please take a look at the excellent article by Jaewoo Cho  InfoJustice website here http://infojustice.org/archives/28561 

http://en.wikipedia.org/wiki/Lenz_v._Universal_Music_Corp.