The Prince Files
WRITERS GUILD ON STRIKE:
KATY PERRY V. KATIE PERRY
Sydney-based fashion designer Katie (with an I-E) Perry aka Katie Taylor filed the lawsuit in 2019 and claimed the pop singer Katy (with a Y) Perry disregarded her trademark by selling clothing merchandise on her Australian tours between 2014 and 2018.
The dispute (but not the lawsuit) has been ongoing in Australia since 2009. Ms. Taylor first began designing clothes in November 2007, then sold them at Sydney markets in May 2008. She had already registered her business and domain name “Katie Perry” in 2007.
ED SHEERAN WINS AT JURY TRIAL
FIRST Sheeran lawsuit: Sheeran had faced allegations that he copied parts of Marvin Gaye’s 1973 hit “Let’s Get It On” for his 2014 song, “Thinking Out Loud.” Heirs of Gaye’s collaborator Ed Townsend — sued him in 2017, claiming Sheeran had copied “harmonic progressions, melodic and rhythmic elements” that are the “heart” of Gaye’s iconic song.
On May 4th, the jury quickly decided in Sheeran’s favor, finding him not liable.
SECOND Sheeran lawsuit: Ed Sheeran defeated a second lawsuit alleging he copied Marvin Gaye’s Let’s Get It On for his song Thinking Out Loud. A district judge in Manhattan, Louis Stanton, dismissed the case brought against Sheeran by Structured Asset Sales (SAS), a company owned by an investment banker David Pullman. SAS is a partial copyright owner in Let’s Get It On.
THIRD Sheeran lawsuit: Sheeran still faces a third pending lawsuit filed by SAS for the sound recording.
RICHARD PRINCE CASE COURT AFFIRMS THAT TRANSFORMATIVE” HAS BOUNDARIES
SDNY denied a fair-use-based motion for summary judgment to artist Richard Prince & co-defendant Gagosian Gallery (the gallery which showcased Prince’s work), trying to clarify and set a boundary for the transformative use test.
The issue is centered around photographs taken by two photographers, Donald Graham and Eric McNatt, which Richard Prince reproduced, displayed, and offered for sale as part of his series of Canvasses, “New Portraits” series, in 2015 without permission.
How Richard Prince used the Plaintiff’s work: He created canvass with enlarged screenshots of instagram post of photos by the photographers. Prince also included 1 or 2 comment(s) under the posts in the screenshot (which includes his comments, i.e. “Canal Zinian de lam jam,” “goobledygood” or “bird talk,” which he testified that those all have an “autobiographical, self-referential meaning”). Prince made at least 5 number figures for each Canvass.
- Transformative Factor: The Court emphasized that the transformative subfactor in factor one is usually at “the heart of the fair use inquiry,” and Prince’s use of plaintiff’s images is not transformative as a matter of law.
- Court’s standard: “From the standpoint of a reasonable observer, looking at the artworks and the photographs side-by-side, [whether] the secondary images have a different character, a new expression, and employ new aesthetics with creative and communicative results distinct from the original.”
- In court’s view, the modification of the photos by Prince, is both too minimal and not sufficient enough to be considered an aesthetic and character different from the original work.
- Richard Prince argued that the purpose of “New Portraits” series is “to satirize and provide commentary on the manner in which people today communicate, present themselves, and relate to one another through social media.”
- But the court reinstated that the user of a protected work must in some way comment upon the work used, not merely use a work to make a statement about something else. – “where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ … is insufficient to render a work transformative.”
Factor Two (Nature of the work): Photographs in this case are all creative work.
Factor three (amount of the work used)
- Prince argued that the use of the entire photograph is reasonable and necessary for him to accomplish the transformative purpose. Because the court concluded that Prince’s use is not transformative, this argument naturally failed.
Factor Four (potential market harm to the work used)
- This factor “weighs slightly in favor of fair use”because the court did recognize from evidence that Prince’s work “applies to an entirely different sort of collector.”
In conclusion, Prince and Gagosian lose on the Summary Judgement Motion based on the four factors.
ANDY WARHOL FOUNDATION V. LYNN GOLDSMITH
Elena Kagan Uses Footnote To Unleash Surprise Sotomayor Diss Track https://abovethelaw.com/2023/05/elena-kagan-footnote-withering-condemnation-warhol
SUPREME COURT OF THE UNITED STATES
ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC. v. GOLDSMITH ET AL.
This is a case we have been following and discussing since 2019 in episodes 111, 132 and 150.
Review of the Facts
Lynn Goldsmith, a professional photographer, had been commissioned by Newsweek in 1981 to photograph a then “up and coming” musician named Prince Rogers Nelson, after which Newsweek published one of Goldsmith’s photos along with an article about Prince. Later, in 1984, Goldsmith granted a limited license to Vanity Fair for use of one of her Prince photos as an “artist reference for an illustration.” The term of the license was that the use would be for “one time” only. Vanity Fair hired Andy Warhol to create the illustration, and Warhol used Goldsmith’s photo to create 16 works now known as the Prince Series. One of the works was a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue.
After Prince died in 2016, Vanity Fair’s parent company (Condé Nast) asked AWF about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince. When Condé Nast learned about the other Prince Series images, it opted instead to purchase a license from AWF to publish one of the other works in the Prince Series known as Orange Prince. Goldsmith did not know about the Prince Series until 2016, when she saw Orange Prince on the cover of Condé Nast’s magazine.
Goldsmith notified AWF that she believed it had infringed her copyright. AWF then preemptively sued Goldsmith for a declaratory judgment of noninfringement or, in the alternative, fair use. Goldsmith counterclaimed for infringement. The District Court considered the four fair use factors and granted AWF summary judgment on its defense of fair use stating the images are “transformative” and the illustrations “wash[ed] away the vulnerability and humanity Prince expresses in Goldsmith’s photographs.”
2nd Circuit Court of Appeals
The Court of Appeals reversed, finding Warhol’s Prince Series was not transformative, and thus not considered fair use.” Putting the two images of Prince side by side, the appeals court ruled Warhol’s piece wasn’t transformative because it “recognizably” derived from and retained “the essential elements” of Goldsmith’s photograph.
U. S. Supreme Court
Before the US Supreme Court, the sole question presented is whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” weighs in favor of AWF’s recent commercial licensing to Condé Nast. In a 7 – 2 decision the Court ruled it did not. The opinion written by Justice Sotomayor, relying on and interpreting Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, states that the first fair use factor considers the reasons for, and nature of, the copier’s use of an original work. The central question it asks is whether the use “merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character.” The court said that while the commercial nature of a use is relevant, it is not dispositive. It is to be weighed against the degree to which the use has a further purpose or different character. The Court said the first factor relates to the justification for the use.
The Court said that to assess the first factor, requires an analysis of the specific “use” of a copyrighted work that is alleged to be “an infringement.” The same copying may be fair when used for one purpose but not another. The Court limited its analysis to the specific use alleged to be infringing in this case—AWF’s commercial licensing of Orange Prince to Condé Nast—and expresses no opinion as to the creation, display, or sale of the original Prince Series works. In the context of Condé Nast’s special edition magazine commemorating Prince, the purpose of the Orange Prince image is substantially the same as that of Goldsmith’s original photograph. Both are portraits of Prince used in magazines to illustrate stories about Prince. The use also is of a commercial nature. Taken together, these two elements counsel against fair use here.
AWF argued that the purpose and character of its use of Goldsmith’s photograph should weigh in favor of fair use because Warhol’s silkscreen image of the photograph has a different meaning or message, as the District Court said it “wash[ed] away the vulnerability and humanity Prince expresses in Goldsmith’s photographs.” The Court concluded that that difference must be evaluated in the context of the specific use at issue. The purpose of AWF’s recent commercial licensing of Orange Prince was to illustrate a magazine about Prince with a portrait of Prince, which was essentially the same purpose for the use of all previous photos and portraits. The Court said one use that portrays Prince somewhat differently from Goldsmith’s photograph (yet has no critical bearing on her photograph), that degree of difference is not enough for the first factor to favor AWF, given the specific context and commercial nature of the use.
AWF also argued another related purpose of Orange Prince, was to comment on the “dehumanizing nature” and “effects” of celebrity. But the Court said that even if such commentary is perceptible on the cover of Condé Nast’s tribute to “Prince Rogers Nelson, 1958–2016,” the asserted commentary “has no critical bearing on” Goldsmith’s photograph, thus the commentary’s “claim to fairness in borrowing from” her work “diminishes accordingly. Copying the photograph because doing so was merely helpful to convey a new meaning or message is not justification enough.”
The Court finally said that the use of a copyrighted work may nevertheless be fair if, among other things, the use has a purpose and character that is sufficiently distinct from the original. In this case, however, Goldsmith’s photograph of Prince, and AWF’s copying use of the photograph in an image licensed to a special edition magazine devoted to Prince, share substantially the same commercial purpose, and AWF has offered no other persuasive justification for its unauthorized use of the photograph.
The Supreme Court thus affirmed the Court of Appeals Judgment.
In her Dissenting Opinion, Justice Kagan seems to have focused on the transformativeness of the portrait itself rather than how the portrait was used. She wrote, “The majority does something novel. Before today, we assessed “the purpose and character” of a copier’s use by asking the following question: Does the work “add something new, with a further purpose or different character, altering the [original] with new expression, meaning, or message”? When it did so to a significant degree, we called the work “transformative” and held that the fair-use test’s first factor favored the copier (though other factors could outweigh that one). But today’s decision—all the majority’s protestations notwithstanding—leaves our first-factor inquiry in shambles. The majority holds that because Warhol licensed his work to a magazine—as Goldsmith sometimes also did—the first factor goes against him.”
Kagan, praised Warhol as the “avatar of transformative copying” and accused the majority of showing a “lack of appreciation for the way his works differ in both aesthetics and message” from the originals. She stated that “the majority ruling hampers creative progress and undermines creative freedom.” She went on to say, about the majority ruling, “It will stifle creativity of every sort. It will impede new art and music and literature. It will thwart the expression of new ideas and the attainment of new knowledge. It will make our world poorer.”
Justice Sotomayor, apparently responding to Justice Kagan’s warning, comments in her opinion that, “The dissent thus misses the forest for a tree. Its single-minded focus on the value of copying ignores the value of original works. It ignores the statute’s focus on the specific use alleged to be infringing.” Justice Sotomayor had stated that, “The same copying may be fair when used for one purpose but not another.” She also pointed out that, “Here, Goldsmith’s copyrighted photograph has been used in multiple ways: After Goldsmith licensed the photograph to Vanity Fair to serve as an artist reference, Warhol used the photograph to create the Vanity Fair illustration and the other Prince Series works. Vanity Fair then used the photograph, pursuant to the license, when it published Warhol’s illustration in 1984. Finally, AWF used the photograph when it licensed an image of Warhol’s Orange Prince to Condé Nast in 2016. Only that last use, however, AWF’s commercial licensing of Orange Prince to Condé Nast, is alleged to be infringing.”
(discuss the shade-throwing tone of both majority and dissenting opinions)
TWITTER V. TAMNEH
Social media platforms not liable for aiding and abetting ISIS due to failure to bring down content or even promotion of such content through its algorithm.
Facts: On January 1, 2017, a terrorist attack on a nightclub in Istanbul, Turkey left 39 people dead and 69 injured, when a lone gunmen entered the nightclub and fired 120 rounds into a crowd of 700 people.
The Islamic State of Iraq and Syria (ISIS), a designated foreign terrorist organization under U.S. law, released a statement the following day claiming responsibility for the attack.
In the years leading up to the attack, ISIS used various forms of social media, including Twitter, YouTube and Facebook for recruiting, fundraising, and spreading of propaganda via uploading of various videos and messages. As is common withPl many forms of social media, Twitter, YouTube, and Facebook used algorithms to match users with content based on the account’s use history.
This included matching users with various forms of ISIS content, including fundraisers for weapons and videos that showed executions of all kinds of people. According to the plaintiffs, these social media platforms were crucial in allowing ISIS to grow and “spread its message of terror.”
Plaintiffs allege that these social media platforms have been complicit in the rise of the terrorist organization because, despite having knowledge of the content being uploaded, the social media platforms failed to remove a large amount of ISIS and terrorist related accounts, posts, videos and general content. Moreover, these social media platforms have aided and abetted the terrorist organization because the algorithms used to suggest content to users in fact suggested such terroristic content to various users.
Specific to Google and Youtube (owned by Google), plaintiffs also allege that the advertisement scheme employed by Google allows the company to share in profits from certain advertisers on the platform. According to plaintiffs, Google has reviewed ISIS videos as part of the program and approved such videos for advertisement, subsequently profiting from such videos and advertisements.
Under 18 USC 2333, parties who have been “injured…by reason of an act of international terrorism” may sue for damages, including for civil liability against parties who “aid and abet, by knowingly providing substantial assistance, or who conspires with the person who committed such an act of international terrorism.
Plaintiffs contend that the social media companies aided and abetted ISIS in carrying out its attack on the nightclub in Turkey because they knowingly allowed ISIS to use their platforms to recruit new members and raise funds for such attacks and further failed to prevent the terrorist organization from doing so. The platforms not only failed to remove such content, but their algorithms actively promoted such content to users.
Procedural History: The District Court dismissed the complaint for failure to state a claim but the Ninth Circuit reversed. The Ninth Circuit found that plaintiffs plausibly alleged that the social media platforms did in fact aid and abet ISIS and therefore the lawsuit could proceed.
Holding: Plaintiffs have failed to establish a plausible claim that the platforms aided and abetted ISIS, a terrorist organization.
Analysis: The court started out by noting that the Justice Against Sponsors of Terrorism Act (JASTA) did allow for parties to sue anyone who provided assistance to or conspired with terrorists in committing an act of terrorism under Section 2333(d)(2).
To prove such a claim, the plaintiff must show that there was an act of intentional terrorism, the act was committed or planned by an organization, and that the organization was designated as a foreign terrorist organization. The parties agree that each of these criteria was met in this case.
The crux of the issue then is whether the social media platforms aided and abetted the terrorist organization in carrying out such an attack. The court noted that aiding and abetting was not “boundless,” otherwise innocent bystanders could nearly always be swept into the purview of aiding and abetting in any crime. Therefore, the defendant must provide some sort of affirmative act with the intent of facilitating the crime. Moreover, the defendant must have consciously and culpably participated in a wrongful act so as to help the crime succeed. The court failed to resolve this question and instead punted due to other questions that more easily resolved the issue.
In determining whether a defendant aided and abetted, we must also determine what exactly the defendant has aided or abetted. Plaintiffs argue that the defendant need only aid and abet ISIS, the actual criminal, in carrying out its acts. Defendants argue that the statute requires the defendant to aid and abet the criminal act itself. The court held that, actually, neither of these is right because, although the statute requires aiding and abetting of the act of international terrorism (as argued by defendants), that requirement does not necessitate a “strict nexus between the alleged assistance and the terrorist act.” In this situation and under this set of facts, the key question is “whether defendants gave such knowing and substantial assistance to ISIS that they culpably participated in the Reina attack. Which is all to say it’s a balance of factors.
Here, ISIS was uploading content to the platforms just like any other user, the algorithms were suggesting content based on users’ previous content selections just like it did for any other user, and no alllegation was made that the specific terrorist who carried out the attack was using these platforms to actually plan his attack (allegation was merely that platforms facilitated growth of ISIS, which in turn lead to this terrorist following ISIS and its ideology).
These factors combined show that the platforms were not “culpably associated” with the Turkish nightclub attack. ISIS was afforded no special treatment on the platforms. And the fact that algorithms actively suggest ISIS content is not enough to overcome this. “The fact that some bad actors took advantage of these platforms is insufficient to state a claim that defendants knowingly gave substantial assistance and thereby aided and abetted those wrongdoer’s acts.”
As it relates to the allegations that Google was liable because it reviewed and approved ISIS videos as part of its revenue sharing systems, the Ninth Circuit held a nearly identical complaint did not give rise to liability and therefore this allegation also fails.
GONZALEZ V. GOOGLE
We introduced this SCOTUS case in our (154th) February episode, but for those listeners who have not heard about it, here’s a short recap:
Nohemi Gonzalez was an American student that was killed in an ISIS attack in Paris back in 2015. The parents argued that Google was liable for promoting ISIS under the Antiterrorism act: supporting ISIS’s recruitment by allowing ISIS to post videos on YouTube (owned by Google). The algorithm on YouTube would then suggest the videos to people as recommended viewing (this would be the part where Google, would have been liable for supporting terrorism.
The crux of Gonzalez’s arguments was that Section 230 should not protect Google as Google was not functioning like a typical publisher in its act of making recommendations. (The Biden Administration also brings this up in its amicus brief, elaborating that the algorithm and YouTube automatically play the next video it’s recommending (essentially auto-play of terrorist materials incurs liability)).
Section 230 was enacted in 1996, in the infancy of the internet. The provision said, “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.” Section 230 helped enable the rise of social networks like Facebook and Twitter by ensuring that the sites did not assume legal liability for every post.
In a 3-page unsigned per curiam opinion, the Supreme Court vacated and remanded the case back to the Ninth Circuit to consider with their ruling on Twitter v. Tamneh. Whereas the Twitter case focused on the Antiterrorism act, Gonzalez focused on Section 230, the Communications Decency Act; though both allegations of secondary-liability are materially identical.
The court suggested that in light of the Twitter ruling, Gonzalez will likely fail, (and therefore a ruling on this case would be currently hypothetical).
“In light of those unchallenged holdings and our disposition of Twitter, on which we also granted certiorari and in which we today reverse the Ninth Circuit’s judgment, it has become clear that plaintiffs’ complaint—independent of §230—states little if any claim for relief… we think it sufficient to acknowledge that much (if not all) of plaintiffs’ complaint seems to fail under either our decision in Twitter or the Ninth Circuit’s unchallenged holdings below. We therefore decline to address the application of §230 to a complaint that appears to state little, if any, plausible claim for relief.”
This case was widely publicized for its ability to “change the future of the modern internet” by having broad implications for how we hold tech companies responsible for their (harmful) design decisions. But with lack of Supreme Court guidance, the door is left open for more lawsuits over Section 230 to come.
Taco Tuesday – hat tip to Henry Self
Watch for reporting on cancellation of trademark held by Taco John’s. LeBron James joining TacoBell in the crusade.