Copyright Transformative Use – Cartoon Network

A man named Billy Mitchell was held the world record high scores in the Donkey Kong and Pac Man video games.  Mr. Mitchell is well known from a 2007 documentary entitled The King of Donkey Kong:  A Fistful of Quarters” which documents a competition between Mitchell and another man attempting to break the world record in the video games.

Cartoon Network has a show called The Regular Show which lampooned Mitchell in an episode with a character named Garett Bobby Ferguson.  Garett Bobby Ferguson was portrayed on the show as a floating head with long black hair and a black beard, like Mitchell.  Garett Bobby Ferguson is the record holder of the “universe” in a game called Broken Bonz.

Mitchell filed suit in Federal Court in New Jersey claiming invasion of privacy and misappropriation of his character for a commercial purpose.  The case was Mitchell v. The Cartoon Network.  The Defendants in the case, Turner Broadcasting Corp. and Cartoon Network, defended on the basis that the First Amendment protected them.

When viewing rights concerning conflicts between the rights of publicity and the First Amendment, Courts will look to the Transformative Use Test, a version of the Fair Use concept in Copyright Law.  The four factors in the Fair Use Test in Copyright Law are:

  1.  The purpose and character of the use;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion of the copyrighted work taken; and
  4. the effect of the taken use on the potential market for the copyright holder.

Under the Transformative Use Test, a Court will look to whether the copyrightable work taken has been transformed by adding new expression or meaning to the work and whether value was added to the original work.  A good example of this is parody or scholarship.

In the Mitchell case the judge found that the parody was a transformative use.  The judge stated that Garett Bobby Ferguson on the show was a large floating head without a body who was from outer space.  While Mitchell held the records for Donkey Kong and Pac Man, Garett Bobby Ferguson on the show held the record  in the entire universe for the made up Broken Bonz video game.  When the fictional character loses his title he blows up.

According to the Judge Thompson “By exaggerating plaintiff’s well-known traits to make the GBF character “cartoonishly evil” the defendants have added something new, transforming their appropriation of the plaintiff’s likeness and making their television show a poor substitute for conventional depictions of Plaintiff.”

While this appears to be a correct decision, merely transforming a character is not enough to prevent a violation of Copyright.  In the famous Salinger v. Colting federal case in the Southern District of New York Colting created a new work which was based on J.D. Salinger’s original Catcher in the Rye.  Colting claimed that his character was a parody of Salinger’s Holden Caulfield.  The court disagreed in finding that just because the character appeared in the work as older and in the present day did not transform the character into something new.

YouTube Defends Fair Use in Copyright Matters

Under the Digital Millennium Copyright Act (“DMCA”) copyright holders can send takedown notices to companies such as YouTube demanding that they remove allegedly offending videos.  If a company like YouTube receives a takedown notice and they remove the video that company will not be held liable for contributory copyright infringement.  If the company determines that the use is not an infringement it can let the material remain but face a lawsuit for contributory infringement.

In YouTube’s case it granted posters three strikes.  If the poster was determined to have violated a copyright holder’s rights three times, the posters site was taken down.

An important issue, however, has been when a takedown notice is sent concerning  material that does not appear to be an infringement, but rather a fair use of the materials.  Under the Copyright Act there are a number of uses of a copyrighted work which are protected from being an infringement.  The Copyright Act lists four factors which determine whether a use of copyrighted material is a fair use:

  1.  the purpose and character of the use, including whether the use is commercial or for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount of the copyrighted work used in relation to the copyrighted work as a whole; and
  4. the effect of the use on the value of the copyrighted work.

Examples of fair use include using a portion of work for criticism, parody, using a portion of the work for news reporting purposes, or quotations from a speech, to name a few.

YouTube has now taken the position that if it determines that a use of a copyrighted work is a fair use, it will not take down the video complained of and, in some cases, will even pay to defend the maker of the video making a fair use of the copyrighted work.  Indeed, for those copyright holders who know that a use is a fair use but send a takedown notice anyway, they can be for the user’s attorney fees in a court of law.

PETA Monkey Copyright Lawsuit

A macaque monkey stole a man’s camera and took selfies of itself at an Indonesian nature preserve.  The man then published a book called Wildlife Personalities that included the photographs taken by the monkey.

The People for the Ethical Treatment of Animals (“PETA”) has sued the man for copyright infringement in Federal Court in San Francisco on behalf of the monkey, whose name is Naruto.  According to PETA the Federal Court in San Francisco has jurisdiction over the case as the publisher of the Wildlife Personalities book is located there.

The lawyer for PETA claims that the Copyright Offices policy whereby it would only register copyright for humans is only an opinion and that the provision of the Copyright Law providing do not limit it to particular species.  The Copyright Office specifically stated in its compendium of practices “The Office will not register works produced by nature, animals, or plants.”  The compendium is generally an internal document of the Copyright Office and does not have the effect of law.  PETA claims the compendium is only the Copyright Office’s opinion.  PETA claims that the photographs are authored by Naruto, who owns the copyright over the photos.  The lawsuit seeks that “All proceeds from the sale, licensing, and other commercial uses of the Monkey Selfies..[should] be used solely for the benefit of Naruto, his family and his community, including the preservation of their habitat.”  PETA filed the suit under the legal name “next friend” used by those filing a lawsuit for those who cannot file the suit themselves.

According to the man who owned the camera, David Slater, the monkey did little more than push a button on the camera.  Mr. Slater was the one who positioned the camera on a tripod and allowed the monkeys to push the button on the camera.  Mr. Slater has also obtained copyright over the photographs in England under the name of his company, Wildlife Personalities Ltd.  A key issue in the lawsuit is whether Mr. Slater’s creative contribution to the photos is sufficient to obtain copyright protection.

Wikimedia, the parent company of Wikipedia, has weighed in on the controversy and allowed the Naruto photos to be published on its site.  It claims that no one owns the copyright in the photos.  Wikimedia claims that Slater’s actions were not sufficiently creative to warrant copyright and that an animal cannot own a copyright, and therefore the photographs are in the public domain.  According to the Chief Communications Officer for Wikimedia, Katherine Maher, “What we found is that U.S. copyright law says that works that originate from a non-human source can’t claim copyright.” Under the licensing note at the bottom of the Wikimedia page it states “This file is in the public domain, because as the work of a non-human animal, it has no human author in whom copyright is vested.”

According to Slater “PETA are deluded in this stunt”, “The images are my copyright and are registered at the US Copyright Office – yes, that’s right!  The [office] has never decided my case, but have probably been the recipient of Wikipedia cash to get involved in my dilemma – the dilemma of protecting images in the internet age and the age of Wikipedia drip-feeding the world it’s consensus knowledge.”  Slater goes on to say “I authored the set-up you see”, “The story has never changed and is there on my website since 2011..long before Wikipedia stole the image, believing instead some rehash from the Daily Mail.  Why believe a newspaper and not the photographer?  Because Wikipedia have an agenda to destroy intellectual property and provide all artistic works for free via its website.”

Counsel for PETA disagrees.  According to its counsel “The photographer’s description of what took place has evolved and changed in a very self-serving way over the last few years as the photograph has become more internationally famous”, “When you look at what he said in most recent book and initial descriptions, it was very clear that he had nothing to do with it.  Naruto independently and autonomously picked up and made a series of photos borne out during the court case.”

In order to qualify for copyright in the United States the work must be fixed in a tangible medium, must be original, and the work must have an author – as works created by nature and animals are not copyrightable.

It seems in this case that Slater should be the owner of the copyrighted work, though legal authorities differ.  Some claim that no one can own the work because the monkey took the picture, while others claim that Slater’s actions were not a significant enough contribution to the photos to warrant copyright.  However, Slater’s argument that he set up the camera, adjust the lighting and basically set the stage for the monkey selfie picks should be considered sufficiently creative to warrant copyright protection.  Under Copyright Law only a “modicum of creativity” is required for protection.  Mr. Slater also made substantial edits to the photos in post-production which should entitled him to protection.

Washington Redskins Trademark Protection

In 2013, the Oneida Indian Nation and other Indian activist groups called for the change of the Washington Redskins REDSKINS trademark.  In 2014, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board cancelled the Washington Redskins’ registered trademark.  Litigation over the now controversial REDSKINS name has gone on for years.  The TTAB in 2014 found that the REDSKINS mark disparaged Native American Indians.

The Washington Redskins appealed the decision.  Litigation counsel for the Washington Redskins argue that “a ban on registering ‘disparaging’ trademarks unconstitutionally burdens speech based on content and view-point, just as would a ban on registering copyrights for ‘disparaging’ books.”

In the Redskins argument, they cite other supposedly disparaging trademarks as indicated in their brief:

“The PTO has registered hundreds if not thousands of marks that the Team believes are racist, or misogynistic, vulgar, or otherwise offensive.  By way of example only, the following marks are registered today:  TAKE YOU PANTIES OFF clothing; DANGEROUS NEGRO shirts; SLUTSEEKER dating services; DAGO SWAGG clothing; DUMB BLONDE beer; TWATTY GIRL cartoons; BAKED BY A NEGRO bakery goods; BIG TITTY BLEND coffee; RETARDPEDIA website; MIDGET-MAN condoms and inflatable sex dolls; and JIZZ underwear.  These are not isolated instances.  The government routinely registers pornographers’ marks:  TEENSDOPORN.COM, MILFSDOPORN.COM, THUG PORN, GHETTO BOOTY, and BOUND GANGBANGS are but a few”.

“No one today thinks registration reflects government approval.  But if this Court holds that it does, how will the government explain registrations like MARIJUANA FOR SALE, CAPITALISM SUCKS DONKEY BALLS, LICENSES SERIAL KILLER, YID DISH, DIRTY WHOORE CLOTHING COMPANY, and MURDER4HIRE?”

These arguments, while creative and to the point, are extremely unlikely to work.  However, this does not mean that the team cannot continue to use the REDSKINS name.  It solely means that the United States Patent and Trademark Office will not formally recognize the name, which lessens the ability of the brand to prevent others from also using the term in connection with their goods and services.  Given the commotion, however, it remains to be seen whether any company would now endeavor to use the term to brand their products and services.

 

Legal fees for the fight are at least partially being funded by the National Football League.  The Washington Redskins are one of the most valuable teams in the NFL.