Lee Burgunder

In my previous post, I explored how times have changed for photographers who once appeared to have the upper hand in copyright infringement disputes with appropriation artists and others. As discussed there, the high-water mark for photographers may have been several years ago, when the Associated Press used its leverage to reach a settlement with Richard Fairey regarding his Obama Hope poster. However, since then, photographers have suffered a series of losses, beginning in 2013 with Cariou v. Prince and continuing in 2018 with Rentmeester v. Nike, Inc. The most recent case to strike a blow against photographers is The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (S.D.N.Y. 2019).

Copyrights protect original works of authorship fixed in a tangible medium of expression. When photographers take pictures of individuals, there are substantial questions regarding the elements that should be attributed to the photographer’s creativity so that the work has the requisite originality for protection. Typically, the photographer’s choices regarding composition, lighting, focus, depth of field, and filtering, among many other elements, provide a sufficient basis to extend copyright protection to almost any photograph. Thus, when artists reproduce or use a photographer’s image in their pieces without permission, the photographer has a legitimate basis to complain.

Just after Capitol Records filed its complaint in this litigation, ReDigi launched a new service, called ReDigi 2.0. With ReDigi 2.0, customers would originally download iTunes music files directly from Apple onto a specific physical location on ReDigi’s server, from which they could then stream their music or download it for personal use on their own media devices.  When a customer chose to sell a digital file, ReDigi would retain the file in the same server space and simply assign “title” to the new owner.  Thus, there would be no duplication of files, and the content would be transferred along with the original physical media. For now, we don’t know the legal status of such a system because it was introduced too late for it to be reviewed in this litigation.

On February 15, 2018 a New York district court judge – in Goldman v. Breitbart News Network – challenged the reasoning of Perfect 10, and she concluded that one who embeds content may be engaged in a public display, thus making the practice far more risky… In Goldman v Breitbart News, Judge Katherine Forrest ruled that the Ninth Circuit was wrong to rely on the Server Test, and that a website thus can face direct liability, under particular circumstances, for making a display by embedding a copyrighted work in a website. The case involved a copyrighted image of Tom Brady, Danny Ainge and others that was first posted by the photographer as a Snapchat Story, but was soon copied by several individuals on Twitter with accompanying tweets.

In 2011, ReDigi Inc. introduced technology that effectively attempted to establish a secondary market for “used” digital music files, where owners who had legally downloaded music files from iTunes could sell the music that they no longer wanted.  In a nutshell, the system allowed the owner of a digital file to transfer the music to ReDigi’s cloud storage locker, from which ReDigi could then sell it to a willing buyer for a lower price than the cost of an “original” purchase from the iTunes Store.  When a sale was made, Redigi would retain 60% of the sales price, while the seller and artist got 20% each. Although the process of transferring a file from an owner’s personal computer to ReDigi required that it be reproduced on ReDigi’s server, the system removed the file from the owner’s personal computer as the file was moved.  Capitol Records, the copyright owner of many music files sold over the ReDigi system, sued ReDigi for copyright infringement, alleging that the company reproduced and distributed its copyrighted works without permission.

My intuition is that the judge came to the correct conclusion, but that the Supreme Court test ultimately did little to guide her thinking.  As I mentioned in my previous IPWatchdog article, determining the contours of the useful article is a metaphysical exercise that likely will require other “tests” to resolve.  Why, for instance, does the useful article not consist of the lighting elements, sockets, wires and covers, which the judge admits also serve important utilitarian functions?  What factors caused her to draw the line so that the covers were not included within her concept of the useful article?  My guess is that it came down to the fact that in her view, “The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.” 

There is no question that smart phones have transformed the social and economic structure of society, and the integration of increasingly effective cameras has helped spark the revolution.  It is now the norm for people to document their lives through images of themselves and those around them, and to share those images through social media, where others then copy, edit, and reuse them within the blink of an eye.  Just imagine all the ways that photos are now taken, posted and virally spread via social media.  For instance, I have taken selfies, asked strangers to take pictures of me with my hiking buddies, and asked friends to send me images of people from their camera rolls. I have taken photographs of well-known personalities at private gatherings, and snapped pictures of individuals when they had no idea I was even there.   Sometimes I decide to post these personal images on Instagram or Facebook, and then away they go… Unfortunately, the Ninth Circuit failed in T3Media to fully and accurately address the limits of copyright preemption on state law claims involving the personal rights of individuals appearing in photographs.

The Supreme Court recently issued its decision in Star Athletica v. Varsity Brands, which addressed whether copyright protection can extend to the graphic designs depicted on cheerleading uniforms. The sole inquiry in Star Athletica was the meaning of a provision in the Copyright Act which permits copyright protection for the design of a pictorial, graphic or sculptural work, but only to the extent that the design can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article. Essentially, the question in Star Athletica was whether a copyright could extend to a graphical design that allegedly made a useful product more desirable because it satisfied the aesthetic demands of target purchasers. But will the Supreme Court’s decision in Star Athletica lead to more expansive protection for clothing designs? The result, I fear, is that the decision will serve to raise more questions than it resolved.