Category Archives: Copyright Protection

Does the New Netflix Movie “Enola Holmes” Infringe the Copyright in Sherlock Holmes?

A recently filed lawsuit in federal court in New Mexico raises the question of whether the new Netflix film “Enola Holmes,” a film about Sherlock Holmes’ sister, infringes the copyright in the Sherlock Holmes character and stories owned by the Arthur Conan Doyle Estate.

As reported in a June 24, 2020 article in the Hollywood Reporter (see https://www.hollywoodreporter.com/thr-esq/conan-doyle-estate-sues-netflix-coming-movie-sherlock-holmes-sister-1300108), the Conan Doyle Estate has sued Netflix, Legendary Pictures, Penguin Random House and others, including author Nancy Springer, whose book series forms the basis of the new movie, claiming that the Enola Holmes character and story infringe the copyright in Arthur Conan Doyle’s famous character and stories.

The complicating factor for the Doyle Estate is that in 2014, the Doyle Estate lost most of its copyright rights to Sherlock Holmes when a federal appellate court ruled that all of the stories authored about the Holmes character before 1923 were in the public domain. But the ruling didn’t strip away the Doyle Estate’s copyright on the last 10 original Sherlock Holmes stories authored between 1923 and 1927.

Under well settled copyright law, only the original elements of Doyle’s last ten Holmes stories are protected by copyright. And the copyright does not protect what are known as scènes à faire, which are standard and customary plot elements standard for the works in a particular genre. Think of a car chase in a crime drama.

To try to get around the public domain and scènes à faire problems, the Estate’s complaint alleges that “After the stories that are now in the public domain, and before the Copyrighted Stories, the Great War happened . . . In World War I Conan Doyle lost his eldest son, Arthur Alleyne Kingsley. Four months later he lost his brother, Brigadier-general Innes Doyle. When Conan Doyle came back to Holmes in the Copyrighted Stories between 1923 and 1927, it was no longer enough that the Holmes character was the most brilliant rational and analytical mind. Holmes needed to be human. The character needed to develop human connection and empathy.”

And so Sherlock “became warmer,” continues the complaint, setting up the question of whether the development of feelings is something that can be protected by copyright and whether the alleged depiction of Sherlock in “Enola Holmes” is somehow derivative and therefore infringing.

It will be interesting to see how this case plays out. The estate likely will have to convince the court that the “warmer” Sherlock Holmes character in the stories still protected by copyright is expressed sufficiently differently from the colder one in the public domain stories such that the warmer character acquired protectable elements. Then, the estate also will have to prove that the warmer character in the allegedly infringing works is warmer in the same manner as the character in the works protected by the copyright.

A copy of the complaint can be found here: https://www.documentcloud.org/documents/6956021-Sherlock.html

Photographers and Visual Artists Beware! You May Lose Exclusive Control Of Your Copyrighted Work By Posting on Social Media

Many photographers and others involved in the visual arts often post their works on Instagram and other social media sites as a way to advertise and promote themselves, showcase their works, and try to license or sell the posted works. In most cases, the posted works are protected by copyright in favor of the author.

Among the rights granted to to the author of a copyrighted work are the exclusive right to control the reproduction and copying of the work, the exclusive right to control the distribution of the work (including to license the work), and the exclusive right to control the display of the copyrighted work. In a recent case from a federal court in New York that sent shockwaves through the copyright world, the court held that a third party who “embedded” a link to a photograph posted on the public portion of Instagram did not infringe the copyright owner’s exclusive rights because the terms and conditions for the use of Instagram grant Instagram the right to sublicense works posted on the public portion of Instagram.

The case in question is Sinclair v. Ziff Davis, LLC, Case No. 18-CV-790 (KMW), decided by Judge Kimba Wood of the United States District Court for the Southern District of New York on April 13, 2020, often referred to as the “Mashable” case because the website that was alleged to have infringed the plaintiff’s copyright was the Mashable site.

In the Mashable case, the plaintiff was a professional photographer who owned the exclusive copyright in a photograph (the “Photograph”) titled “Child, Bride, Mother/Child Marriage in Guatemala.” The plaintiff posted a copy of the Photograph to her Instagram account, which was a “public” account, viewable by anyone.

Mashable offered the plaintiff $50.00 to license the Photograph for use in connection with an article about female photographers, which the plaintiff rejected. Mashable nevertheless featured the Photograph in its article even though the plaintiff did not give Mashable permission or consent to use the Photograph, and in fact rejected Mashable’s attempt to obtain a license.

Mashable used a technical process called “embedding” to incorporate the Photograph into its article. Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party’s server, into the coder’s website. When an individual visits a website that includes an “embed code,” the user’s internet browser is directed to retrieve the embedded content from the third-party server and display it on the website. As a result of this process, the user sees the embedded content
on the website, even though the content is actually hosted on a third-party’s server, rather than on the server that hosts the website.

Judge Wood held that Mashable did not infringe the plaintiff’s copyright because the plaintiff granted Instagram the right to sublicense the Photograph when the plaintiff created her Instagram account and agreed to Instagram’s terms and conditions, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph.

As Judge Wood explained her decision, the terms and conditions for use of the public portion of the Instagram site state that “by posting content to Instagram, the user “grant[s] to Instagram a nonexclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content
that you post.” Based on this language, Judge Wood found that, because Plaintiff uploaded the Photograph to Instagram and designated it as
“public,” she agreed to allow Mashable, as Instagram’s sublicensee, to embed the Photograph in its website so there was no copyright infringement.

There are a number of important take-aways from the Mashable case:

1. Although the Mashable case involved the Instagram terms and conditions, virtually all social media sites — like Twitter, Facebook, etc. — have the same or similar terms and conditions which allow sublicensing, so the Mashable case may be extended to infringement claims based on works posted on other social media sites.

2. The Mashable case is limited to situations where the accused infringer displayed the copyrighted work by embedding the work on its website. Traditional copyright infringement analysis still will apply in those cases where there is actual copying – in other words, where the accused infringer publishes a digital copy of a copyrighted work on its website rather than just using embedding.

3. It is not clear how far the Mashable case will extend. The Mashable case is a trial court decision that has no binding effect on any other court in the United States. There have not been any cases outside the Southern District of New York that have addressed the same issue as the Mashable case. In another recent decision from the Southern District of New York on June 1, 2020 that also involved embedding a copyrighted photograph from Instagram (McGucken v. Newsweek, LLC, Case No. 19-CIV-9617 (KPF)), Judge Katherine Polk Failla confirmed the Mashable holding but refused to dismiss her case because she found there was no evidence of a sublicense between Instagram and Newsweek. The McGucken decision is interesting and curious because the facts were virtually the same as the Mashable case.

4. Finally, and perhaps most importantly, Instagram itself has expressly stated and made clear that users of its embedding feature don’t get licenses from Instagram to display copyrighted photographs of others.

So what does this all mean? For photographs and visual artists, the safest way to protect their copyrights is to switch their Instagram and other social media accounts to private until we have more clarity about the reach of the Mashable decision. But of course, such a switch will prevent users on the Instagram platform from seeing their content, which can be a career liability for professionals. Unfortunately, right now, Instagram does not offer an option to make content public inside the Instagram platform while disabling embedding on external websites.

For media companies and those who want to display photographs and other works posted by others on Instagram and other social media sites, the decision is clear: do not rely on the Mashable decision to shield you from liability for copyright infringement even if you intend to just embed the work. Instead, get permission from the artist to display his or her work and do not display if the artist says no.

California Halts Efforts to Seek Copyright Protection for Public Records

On June 21, 2016, we published a post discussing an effort by the State of California to obtain copyright protection for public records.  The proposed legislation sought to give copyright protection to public records created using taxpayer funds (such as maps, hearing transcripts, legislative reports, etc.), and would have authorized state and county governments to control and even prohibit their use.  The proposed legislation met with strong opposition, primarily from free speech and open government advocates.  Fortunately, the author of the controversial legislation (Assemblyman Mark Stone of Monterey Bay) saw the error of his proposal and has abandoned the proposed legislation.

Important Copyright Tips For Businesses

Copyrights are very powerful rights but often are not fully understood or protected by business owners.  Here are some important tips about copyrights with which all businesses should be familiar:

  1. Register: Businesses should identify and register their copyrights within 90 days of the publication of the copyrighted work.
  2. Notice:  Even though not required, we strongly recommend that businesses place an appropriate copyright notice on all copyrighted works to discourage infringement and cut off the “innocent infringer” defense.
  3. Rights: All businesses must make sure that they have the right (documented in writing) to use any copyrighted materials created by others.  Copyright issues sometimes can be hard to spot so we strongly recommend that businesses retain an experienced intellectual property attorney to conduct a periodic intellectual property audit.
  4. Agreements: All businesses must make sure they have appropriate written agreements in place with employees and other creative personnel regarding ownership and use of copyrighted materials (including, most particularly, materials created by employees and contractors) as well as agreements establishing the right to use copyrighted materials owned by others.
  5. Insurance: Businesses involved in any way in areas that involve the creation and use of copyrighted materials should explore obtaining insurance for infringement claims.  Please note that most commercial general liability policies do not cover intellectual property claims – the purchase of separate coverage usually is required.
  6. Infringement: Businesses should take seriously any infringement of its copyrighted materials as well as claims of infringement asserted by third parties.  In both situations, the business should promptly consult with an experienced copyright lawyer to determine an appropriate and cost-effective course of action.

Supreme Court to Hear Fight Over Cheerleader Uniforms

On September 30, 2015, we posted about a recent case that addressed whether decorative aspects of cheerleader uniforms could be the subject of copyright protection.  Our September 30 post can be found here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern/

The United States Supreme Court recently decided to review the case.  More information can be found in this recent article in The Hollywood Reporter: http://www.hollywoodreporter.com/thr-esq/supreme-court-hear-fight-cheerleader-889321

As the article notes, while the case nominally is about cheerleader uniforms, the Supreme Court’s decision could have far-reaching implications  for Hollywood and could set  boundaries on the copyright protection afforded to costumes.  Stay tuned to this space for updates.

While The Scope Of Copyright Protection Is Broad, Two Recent Cases Involving Yoga Positions And Recipes Show That There Are Limits

In a recent post in this space, we commented on several cases that illustrated that the scope of copyright protection is extremely broad (see here: https://affinitylaw.wordpress.com/2015/09/30/three-cheers-for-the-wood-flooring-recent-cases-confirm-copyright-protection-for-cheerleader-uniforms-and-wood-flooring-pattern).  Two recent cases show that while copyright protection is broad, there still are limits:

Bikram’s Yoga College of India, L.P. v. Evolution Yoga, LLC:  In this well-publicized case, the issue was whether a sequence of 26 yoga positions and two breathing exercises practiced in a specific order, called the “Sequence” and developed by Bikram Choudhury (a seminal figure in making yoga so popular in the United States and throughout the world and the creator of Bikram Yoga, sometimes called “hot yoga”), could qualify for copyright protection.  In 1979, Choudhury published the book “Bikram’s Beginning Yoga Class” that includes descriptions and photographs of the Sequence in practice. In 2002, Choudhury also registered a copyright on the “compilation of exercises” contained in his book.  In 2009, the defendants founded their own yoga studio and offered “hot yoga” classes that included the Sequence.  Choudhury sued for copyright infringement claiming that the defendants infringed on his copyrighted works by offering yoga classes featuring the Sequence.

On October 8, 2015, the Ninth Circuit Court of Appeals held that the Sequence falls squarely within the exclusion detailed in Section 102(b) of the Copyright Act, which excludes from copyright protection “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embedded in such work.”  The Ninth Circuit found the Sequence was a process for obtaining physical and emotional fitness and was, therefore, not copyrightable.

Tomaydo-Tomahhdo, LLC v. Vozary:  The issue in the Tomaydo-Tomahhdo case was whether a book of recipes could qualify for copyright protection.  The plaintiff was a restaurateur who created and ran a successful restaurant and delivery catering business.  In 2012, the plaintiff assembled a book of recipes that had been developed for the restaurant.  The defendant was a former partner in the plaintiff’s business.  He copied the plaintiff’s recipes and used them in a competing catering business, and the plaintiff sued him for copyright infringement.

On October 20, 2015, the Sixth Circuit Court of Appeals held there was no copyright infringement because neither the recipes themselves nor the book which compiled the recipes were entitled to copyright protection.  In so holding, the Sixth Circuit explained that the recipes themselves are not covered by copyright because they are simply listings of facts (i.e. the ingredients) and functional instructions how to assemble the ingredients.  Likewise, the Sixth Circuit held that the recipe book did not have any originality (such as original commentary, pictures, etc. by the author) that qualified for copyright protection separate from the recipes themselves.

In both the Bikram Yoga case and the Tomaydo-Tomahhdo case, the parties claiming copyright protection may have been able to take steps to protect their intellectual property other than merely claiming copyrights in the materials addressed by those cases.  As always, we highly recommend that businesses consult with experienced intellectual property counsel to assess what IP protection may be available to the business.

 

 

 

 

Three Cheers for the Wood Flooring! Recent Cases Confirm Copyright Protection for Cheerleader Uniforms and Wood Flooring Pattern.

Two recent cases show that the bar to obtain copyright protection is very low, and that designs on a variety of media can qualify for copyright protection if the design is not functional and demonstrates a minimal level of creativity:

Varsity Brands v. Star Athletica:  The issue in the Varsity Brands case was whether the decorative designs on cheerleading uniforms were eligible for copyright protection.  By way of background, the Copyright Act does not provide copyright protection for the functional aspects of clothing but it is possible to obtain copyright protection for purely decorative features of clothing.  Where to draw the line between these two bedrock principles of copyright law in the fashion design context has perplexed many courts over the years.

In the Varsity Brands case, the Sixth Circuit Court of Appeals held that the decorative elements of a cheerleading uniform (such as chevrons, stripes, etc.) could be “identified separately from, and are capable of existing independently of, the utilitarian aspects of [the] uniforms” and consequently that the graphic designs on cheerleading uniforms are copyrightable subject matter if sufficiently creative.  The court’s holding in such regard is an application of the copyright doctrine known as the “separability” doctrine.

In so holding, the Sixth Circuit was careful to distinguish between fabric design and dress design.  Fabric design covers designs printed on a finished garment and have been treated by the courts as features that are not functional and therefore are subject to copyright protection.  Dress design graphically sets forth the shape, style, cut and dimensions for converting fabric into a finished garment and has been held to be functional and thus not capable of copyright protection.

Home Legend LLC v. Mannington Mills, Inc.:  The issue in the Home Legend case was whether a two-dimensional laminate flooring design qualified for copyright protection.  By way of background, laminate flooring consists of three functional layers.  Laminate flooring manufacturers then add a decorative layer called “décor paper” which places two-dimensional artwork on top of the laminate flooring.

The decorative layer at issue in the Home Legend case was a layer that simulated the distressed look of a maple floor after years of wear and tear.  The Eleventh Circuit Court of Appeals held that the design was separable from the flooring itself (another application of the separability doctrine) and displayed a sufficiently minimum level of creativity to “hurdle the low bar of copyright originality.”

Ninth Circuit Rules En Banc That Actors Do Not Have Protectable Interests In Their Individual Film Performances

On January 7, 2015, we posted about the case of Garcia v. Google, Inc., which was a case then-pending in the Ninth Circuit Court of Appeals that raised the issue whether an actor has a protectable interest in his or her individual film performance.  (See Here for prior post: https://affinitylaw.wordpress.com/2015/01/07/do-actors-have-protectable-copyright-interests-in-their-own-individual-film-performances/).  While the case arose in the unique context of an actor’s performance in what she believed was a regular film being re-cut into an anti-Islamic propaganda film, the case nevertheless had important implications in the copyright field and for the entertainment and film industries.

On May 18, 2015, an en banc panel of the Ninth Circuit issued its decision in the Garcia case and (as expected by most copyright lawyers), the Ninth Circuit held that actors do not enjoy a copyright interest in their individual performances – primarily because they do not fix their “acting performance in a tangible medium, as required by 17 U.S.C. § 101.” Thus, the actor cannot be the author or owner of the work since the fixation is done by the film crew, not the performers.

The Ninth Circuit also rejected the arguments that actors in a film enjoy privacy right protections, any “right to be forgotten,” or any protection from emotional distress arising from copyright law.

The Ninth Circuit en banc decision in Garcia can be found here: http://cdn.ca9.uscourts.gov/datastore/opinions/2015/05/18/12-57302.pdf

Do Actors Have Protectable Copyright Interests In Their Own Individual Film Performances?

While the answer to the question posed by the title of this post may seem simple at first blush, a recent decision by the Ninth Circuit Court of Appeals has created significant uncertainty and created the spectre of possible Supreme Court intervention to answer this important copyright law question.

The factual scenario that gives rise to this question is where an actor is not the “author” of an entire film for copyright purposes but rather only plays a small role in the film.  Under such circumstances, does the actor nevertheless own a protected copyright interest in his or her own individual performance such that the performance can be licensed or the actor can control the use of his or her performance (such as through the editing or distribution process)?

In Garcia v. Google, Inc., a divided three-judge panel of the Ninth Circuit Court of Appeals touched off a firestorm of copyright controversy when it suggested that there could be multiple copyright interests in a fixed work like a film.  The majority in the Garcia case explained its decision by stating that “nothing in the Copyright Act suggests that a copyright in a creative contribution to a work simply disappears because the contributor doesn’t qualify as a joint author of the entire work.”  The majority ultimately ruled that “[a]n actor’s performance, when fixed, is copyrightable if it evinces some minimal degree of creativity” such that an actor may “assert a copyright interest only in the portion of [the work] that represents her individual creativity.”

Perhaps the facts of Garcia explain the decision to some extent.  In Garcia, the plaintiff performed a small role in what she believing was going to be a feature-length film entitled “Desert Warrior.”  However, after filming was complete, the footage was re-cut into a short film that was an anti-Islamic propaganda piece and was distributed via the Internet over the You Tube service.  Subsequent to the release of the film, the plaintiff received death threats and became the subject of a fatwa issued by a Muslim cleric.

The plaintiff claimed ownership in the copyright to her performance and, since she never authorized the broadcasting of her performance on You Tube, the plaintiff demanded that Google (the owner of You Tube) take down the film from You Tube pursuant to the requirements of the Digital Millennium Copyright Act.  Litigation ensued when Google refused to do so and, to date, the Ninth Circuit has sided with the plaintiff.

The Ninth Circuit decision in Garcia is at odds with a recent decision of a trial court in the Southern District of New York in the case of 16 Casa Duse LLC v. Merkin, where the court held that an actor does not own a copyright interest in his or her individual performance, stating that  where “two or more parties each independently make independently copyrightable contributions to a work . . . the dominant author is the sole author.”

The 16 Casa Duse case is on appeal to the Second Circuit Court of Appeals and the Ninth Circuit granted en banc review and heard argument in the Garcia case on December 15, 2014.  Assuming the Second Circuit affirms the trial court in 16 Casa Duse and the full panel of the Ninth Circuit affirms the Garcia decision (which may not happen given the en banc review), we will have a split among two of the most prominent courts of appeal in the geographic areas where the large majority of films are made in the United States.  In such case, Supreme Court review would seem inevitable.  Stay tuned . . . .

 

Fashion Designs & Copyright Protection

Here’s a link to a very interesting and informative discussion in today’s New York Times about the complicated topic of copyright protection for fashion designs: http://www.nytimes.com/roomfordebate/2014/09/07/who-owns-fashion?emc=edit_th_20140908&nl=todaysheadlines&nlid=44964334

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