Seattle Intellectual Property Inn of Court
Group 3
Fair Use in a Post Lenz v. Universal World
1
Fair Use in a Post Lenz v. Universal World
Fair Use Factors and Transformative Use
Ramsey Al-Salam
DMCA Takedown Procedures, an Overview
Reagan Roth
Lenz v. Universal Music Corp.
Ben Byer
2
Fair Use in a Post Lenz v. Universal World
What does “consider” mean in context of DMCA
Takedown?
David Binney
Will the Lenz decision impact Trademark Fair
Use?
John Crosetto
3
Fair Use in a Post Lenz v. Universal World
Pop Quiz: Is the Use Fair Use?
Bowman Neely and Angela Galloway
4
Principles of Fair Use
• 17 U.S.C. § 107 provides:
“[T]he fair use of a copyrighted work ... for purposes such as
criticism, comment, news reporting, teaching (including making
copies for classroom use), scholarship or research is not an
infringement of copyright. In determining whether the use made
of a work ... is a fair use the factors to be considered shall
include –
(1) the purpose and character of the use including whether such
use is of a commercial nature or is for nonprofit educational
purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation
to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for value of
the copyrighted work.
5
129513417.1
Principles of Fair Use
• Treated as an affirmative defense.
• Burden sometimes shifted to copyright owner with respect to
fourth point.
• Underlying policy considerations include transaction
costs and social benefits.
• Typically treated as mixed question of law and fact.
• If examples in first sentence clearly satisfied, sometimes
treated as an issue of law, while balancing of factors in
second sentence is typically treated as issue of fact.
• Courts weight factors differently.
6
Examples of Fair Use
• Home videotaping of programs to watch at a different
time.
• Sony Corp. of America v. Universal Studios, Inc., 464 U.S.
417 (1984).
• Copying publications for purposes of disclosing
prior art or establishing invalidity.
• American Institute of Physics v. Winstead P.C., Civ.
Action No. 3:12-cv-1230 (N.D. Tx. April 20, 2012)
(granting motion to dismiss based on fair use defense)
7
Transformative Use - Parody
• Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569
(1994)
• Plaintiff owned the rights to song “Oh, Pretty Woman”.
• Defendant was part of 2 Live Crew, and created a song
that “juxtaposes the romantic musings of a man whose
fantasy comes true, with degrading taunts, a bawdy
demand for sex, a sigh of relief from paternal
responsibility.”
• Sixth Circuit reverses summary judgment, finding that
too little emphasis had been put on the commercial use.
8
2 Live Crew – “Oh, Pretty Woman”
9
Transformative Use - Parody
• Supreme Court focuses on the first factor, holding that
a central issue is whether the defendant’s work “merely
‘supersedes the objects’” of the original work or
“adds something new, with a further purpose or
different character, altering the first with new
expression, meaning or message; it asks, in other
words, whether and to what extent the new work is
‘transformative.’”
• “The more transformative the new work, the less
will be the significance of other factors, like
commercialism, that may weigh against the finding
of fair use.”
10
Transformative Use - Parody
• “Like less ostensibly humorous forms of criticism, it can
provide social benefit, by shedding light on an earlier
work, and, in the process, creating a new one. We thus
line up with the courts that have held that parody, like
other comment or criticism, may claim fair use under
Section 107.”
• “We have less difficulty in finding that critical element in
2 Live Crew’s song than the Court of Appeals did,
although having found it we will not take the further step
of evaluating its quality . . . Whether . . . parody is in
good taste or bad does not and should not matter to fair
use.”
11
Transformative Use - Parody
• Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792
(9th Cir. 2003)
• Defendant sold photographs entitled “Food Chain Barbie” in
which he “depicts one or more nude Barbie dolls juxtaposed
with vintage kitchen appliances.”
• Photographer “explains that he chose to parody Barbie in his
photographs because he believed that ‘Barbie is the most
enduring of those products that feed on the insecurities of
our beauty and perfection-obsessed consumer culture.’”
12
Transformative Use - Parody
• District court grants summary judgment based on fair use
because “(1) his use was parody meant to criticize Barbie;
(2) he only copied what was necessary for his purpose, and
(3) his photographs could not affect the market demand for
Mattel’s products or those of its licensees.”
• The Ninth Circuit affirms, holding that whether a work is a
parody as a question of law, and finding that defendant’s
work was clearly a parody.
13
Transformative Use – Beyond Parody
• Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013)
• Plaintiff publishes a book of classical portraits and
landscape photographs taken while living among
Rastafarians in Jamaica.
• Plaintiff was a “well-known appropriation artist,”
defined as “the more or less direct taking over
into a work of art a real object or even an existing
work of art.”
14
Transformative Use – Beyond Parody
• Plaintiff purchased one of defendant’s books, and, at
one point, tore out 35 photographs “pinned them to a
piece of plywood.” He also created other artworks in
which he “incorporated partial or whole images.”
15
Transformative Use – Beyond Parody
16
Transformative Use – Beyond Parody
• Second Circuit reverses summary judgment for plaintiff,
finding the “law does not require that a secondary use
comment on the original artist or work.”
• Second Circuit finds fair use based on transformative
nature of works:
“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.”
17
Transformative Use – Beyond Parody
• Second Circuit disagrees with district court’s reliance on
testimony:
“It is not surprising that, when transformative use is at issue,
the alleged infringer would go to great lengths to explain and
defend his use as transformative. Prince did not do so here.
However, the fact that Prince did not provide those sorts of
explanations in his deposition – which might have lent strong
support to his defense – is not dispositive. What is critical is
how the work in question appears to the reasonable observer.”
18
Transformative Use – Computer Searches
• Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003)
• Plaintiff was a photographer with copyright images of the
American West.
• Defendant operated a search engine that displays
thumbnails of images and links.
• Ninth Circuit affirms grant of summary judgment that use of
thumbnails was fair use.
• “We find that Arriba’s use of Kelly’s images for thumbnails
was transformative.”
19
Transformative Use of Computer Searches
• “Although Arriba made exact replications of Kelly’s
images, the thumbnails were much smaller, lowerresolution images that served an entirely different
function than Kelly’s original images. Kelly’s images
are artistic works intending to inform and to engage
the viewer in an aesthetic experiences . . . . Arriba’s
use of Kelly’s images in the thumbnails is unrelated to
any aesthetic purpose.”
20
Transformative Use of Computer Searches
• Authors Guild Inc. v. Google Inc., Appeal No. 13-4829 (2nd
Cir. Oct. 16, 2015) (affirming summary judgment of fair use
for Google’s scanning of millions of books for Book Search,
and displaying snippets of text in response to searches –
“Google’s making of a digital copy to provide a search
function is a transformative use, which augments public
knowledge by making available information about Plaintiffs’
books without providing the public with a substantial
substitute for matter protected by the Plaintiffs’ copyright
interest in the original works or derivatives of them. The
same is true, at least under present conditions, of Google’s
provision of the snippet function.”) (Emphasis in original).
21
Transformative Use Rejected
• Castle Rock Entertainment, Inc. v. Carol
Publishing Group, Inc., 150 F.3d 132 (2nd Cir.
1998)
• Plaintiff owned the rights to the Seinfeld television
series.
• Defendants published a book called The Seinfeld
Aptitude Test, a “trivia quiz book devoted exclusively to
testing its readers’ collection of scenes and events
from” the series.
22
Transformative Use Rejected
• Here’s a sample question:
1. To impress a woman, George passes himself off as:
a) A gynecologist;
b) A geologist;
c) A marine biologist;
d) A meteorologist.
• District court grants summary judgment to plaintiff on
the copyright claim.
• Second Circuit affirms.
23
Transformative Use Rejected
• Second Circuit finds no transformative use:
“Any transformative purpose . . . is slight to nonexistent. We reject the argument that The SAT
was created to educate Seinfeld viewers or to
criticize, ‘expose,’ or otherwise comment upon
Seinfeld. . . . The SAT’s back cover makes no
mention of exposing Seinfeld to its readers, for
example, as a pitiably vacuous reflection of a
puerile and pervasive television culture, but rather
urges SAT readers to ‘open this book to satisfy
[their] between-episode [Seinfeld] cravings.’”
24
Transformative Use Rejected
“Also, dividing the trivia questions into increasing
levels of difficulty is somewhat more original than
arranging names in a telephone book in alphabetical
order . . . The SAT’s incorrect multiple choice answers
are also original. However, the work as a whole,
drawn directly from the Seinfeld episodes without
substantial alteration, is far less transformative than
other works we have held not to constitute fair use.”
“[S]ince The SAT has transferred Seinfeld’s expression
into trivia quiz book form with little, if any,
transformative purpose, the first fair use factor weighs
against defendants.”
25
Transformative Use in Part
• Bouchat v. Baltimore Ravens Limited Partnership,
619 F.3d 301 (4th Cir. 2010)
• Plaintiff was a security guard and amateur artist who
created sketches for Baltimore Ravens logo when NFL
team first moved to town.
• Team adopts similar logo, places the logo on its
helmets, and was found to infringe copyright.
• Team ultimately drops logo.
• Years later, plaintiff seeks to enjoin team from
publishing highlight films showing logo, and from
displaying logo in museums.
26
Transformative Use in Part
• Fourth Circuit found fair use for use in lobby, but no fair
use for highlight films.
• Finds the highlight films do not serve any
“transformative purpose – the films capture the logos
that originally appeared, and the logo remains a symbol
identifying the Ravens.”
27
Transformative Use in Part
• Rejects district court’s “conclusion that the purpose
upon the use of the . . . logo in the highlight films was
‘primarily historical.’”
• Finds there was a market for licensing the logo.
• Reaches a separate conclusion on use of the logo in
the Ravens lobby.
• Finds that the logo “is displayed in the Ravens lobby on
actual game tickets from the inaugural season and in
two large photos of the team’s first ever first-round draft
picks. These depictions of the logo are consistent with
the fair use display of copyrighted material in a
museum.”
28
Transformative Use in Part
• Finds that the “season tickets and the player photos . . .
are displayed to represent the inaugural season and
the team’s first draft picks.”
• Also relies on the fact that there was no “clear-cut
commercial purpose,” insofar as the “lobby is open to
the public, free of charge.”
29
DMCA takedown procedures, an overview
Reagan Roth
30
DMCA Takedown Procedures
For purposes of section 512(c), a “service provider” means “a
provider of online services or network access, or the operator of
facilities therefor,” including “an entity offering the
transmission, routing, or providing of connections for digital
online communications, between or among points specified by a
user, of material of the user’s choosing, without modification to
the content of the material as sent or received.”
17 USC §512(k)(1)
31
Designated Agents
Copyright Office maintains a directory of designated
agents under the DMCA (http://copyright.gov/onlinesp/list/a_agents.html)
32*
Takedown Process
• Copyright owner or its agent sends a claim notice to a service
provider
• Service provider must respond expeditiously to remove, or
disable access to the allegedly infringing content to receive
the benefits of the limitation of liability in Section 512(c).
– If the Service provider does not remove the content, they will be deemed to
have been placed on notice, and may face secondary liability for continuing to
host the allegedly infringing content
• After the content has been removed, the poster can submit a
counter claim or counter notice.
– Counter notices are rare, but are becoming increasingly more common in
cases of false DMCA notices.
– It is often faster to move to a new host than to file a counter notice.
33*
Takedown Process (cont.)
• If the service provider receives a Counter Notice, they must
wait 10-14 business days before they re-activate or allow
access to the claimed infringing content.
• Unless the original complainant files an action seeking a court
order restraining the use of the allegedly infringing content,
and provides notice to the service provider.
• Service providers may reactive access to the content, if no
court action is filed, but the service has no obligation to
restore the content.
34*
Notice Requirements
• Description of the Work believed to be infringed
• Allegedly infringing content (including a link)
• Statements:
– I have a good faith believe that the use of the material in the manner
complained of is not authorized by the content owner, its agents or the law.
– The information in this notification is accurate, and under penalty of perjury, I
am the owner, or an agent authorized to act on behalf of the owner, of an
exclusive right that is allegedly infringed.
• Contact Information
• Signature
35*
Counter Notice Requirements
•
•
•
•
•
•
Identification of the material that has been removed or for which access has
been disabled
Statement of a good faith belief that the materials was removed or disabled as
a result of mistake or misidentification of the materials to be removed
Statement of consent to federal jurisdiction in the district in which you are
located and that you will accept service of process from the person who
provided the original notification (or their agent)
Name and contact information
Signature
If the counter notice contains misrepresentations that the material is not infringing, the
submitter may be liable for damages (including costs and attorneys’ fees).
17 USC 512(g)(3)
36*
Online Forms
YouTube
37*
Online Forms
Facebook
38*
Online Information
Etsy
39*
Lenz v. Universal Music Corp.
Ben Byer
dwt.com
Procedural History
 June 25, 1984
 Prince releases Purple
Rain, including “Let’s Go
Crazy”
dwt.com
Procedural History
 1993
 Prince changes name to an
unpronounceable glyph
and becomes known as
“The Artist Formerly
Known as Prince”,
"TAFKAP"
dwt.com
Procedural History
 2000
 Prince changes his name
back to Prince and
becomes known as “The
Artist Formerly Known as
‘The Artist Formerly
Known as Prince’”,
"TAFKATAFKAP“, or
“Prince”
dwt.com
Procedural History
 January 2006
 A star is born—the
youngest son of Stephanie
Lenz
dwt.com
Procedural History
 February 7, 2007
 Ms. Lenz uploads a
video of his famous
dancing
dwt.com
Perkins Coie LLP
Procedural History
 Prince’s publishing administrator, Universal Music, searches
for videos using Prince’s music and
– Evaluates whether made significant use of song
– Evaluates whether song recognizable
– Evaluates whether song used in a significant portion of the video
– Ignores videos using snippet of song, or having noisy background
– Does not consider fair use
 Lenz’s video titled with Prince song title and music played
over nearly full length of video
dwt.com
Procedural History
 June 4, 2007
 Universal Music sends
YouTube a DMCA
takedown notice
 Addresses 200 videos,
including Lenz’
 YouTube complies, takes
down video, and notices
Lenz
dwt.com
Procedural History
 June 7, 2007
 Lenz sends counter
notice pursuant to
§ 512(g)(3) of the DMCA
 Argues “fair use”
dwt.com
Procedural History
 Universal Music opposes
 Notice didn’t say
statement made under
penalty of perjury
dwt.com
Procedural History
 Mid-July, 2007
 EFF agrees to represent
Lenz pro bono
 Lenz sends second
counter notice
 YouTube reinstates the
video
Electronic Frontier Foundation
dwt.com
Procedural History
 July 24, 2007
 Lenz files suit against Universal
Music in N.D. Cal.
– Tortious interference
– Misrepresentation under § 512(f)
dwt.com
Procedural History
 District court dismissed tort claim
 Parties cross moved for SJ on the misrepresentation claim
 District court denied both motions but certified order for
interlocutory appeal
dwt.com
Issue on Appeal
 Takedown notification must state the copyright holder believes
the material “is not authorized by the copyright owner, its
agent, or the law.” Sec. 512(c)(3)(A).
 But cannot “knowingly materially misrepresent[]. . . that
material or activity is infringing.” Sec. 512(f).
 Issue: Whether fair use is an “authorization” requiring
consideration before issuing takedown notification.
 Issue of first impression across the circuits.
dwt.com
Analysis
 Lenz suffered nominal damages
 Standard statutory construction
– No express definition, apply plain meaning
 Universal argued fair use is not “authorized by the law”
because it is an affirmative defense
 11th Circuit: “Although the traditional approach is to view ‘fair
use’ as an affirmative defense, . . . it is better viewed as a right
granted by the Copyright Act”
dwt.com
Holding
 Fair use is special, even if it’s an affirmative defense
 “We conclude that because 17 U.S.C. § 107 created a type of
non-infringing use, fair use is “authorized by the law” and a
copyright holder must consider the existence of fair use before
sending a takedown notification under § 512(c).”
dwt.com
Looking ahead
 Both parties filed petitions for rehearing
– Universal: Whether Lenz suffered an injury sufficient to
create jurisdiction
– Lenz: Whether the belief need only be subjective
dwt.com
What does “consider” mean in context of
a DMCA takedown notice?
David Binney
58
“CONSIDER”
Lenz v. Universal Music Corp.
59
“Consider” -1
• [A] copyright owner must consider the
existence of fair use before sending a
takedown notification under Section 512(c).
• if a copyright holder ignores or neglects our
unequivocal holding that it must consider fair
use before sending a takedown notification, it
is liable for damages under § 512(f).
60
“Consider” - 2
• … a copyright holder’s consideration of fair
use need not be searching or intensive …
• … formation of a subjective good faith belief
does not require investigation of the allegedly
infringing content
61
“Consider” - 3
• The DMCA already requires copyright owners
to make an initial review of the potentially
infringing material prior to sending a
takedown notice; indeed, it would be
impossible to meet any of the requirements of
Section 512(c) without doing so. A
consideration of the applicability of the fair
use doctrine simply is part of that initial
review.
62
“Consider” - 4
• consideration of fair use may be sufficient if
copyright holders utilize computer programs that
automatically identify for takedown notifications
content where:
• “(1) the video track matches the video track of a
copyrighted work submitted by a content owner;
• (2) the audio track matches the audio track of
that same copyrighted work; and
• (3) nearly the entirety . . . is comprised of a single
copyrighted work.”
63
“Consider” - 5
• Copyright holders could then employ individuals
like Johnson to review the minimal remaining
content a computer program does not cull.
• … we need not definitively decide the issue here
because Universal did not proffer any evidence
that—at the time it sent the takedown
notification to Lenz—it used a computer program
to identify potentially infringing content.
• So … Punt
64
“Consider” - 6
• Safest course for now in light of en banc
review petition and probable Supreme Court
review:
• assume some level of objective
reasonableness will be injected into the mix
65
“Consider” – 7
• Carefully designed automated pre-screening,
plus
• Human review of final candidates for takedown
• Some training in fair use analysis, even if the
human reviewer is not a lawyer
• Document the review process with
appropriate forms and checklists
66
“Consider” - 8
• Bypass the entire issue by contracting with the
ISP.
• YouTube enters into agreements with certain
music copyright owners to allow use of their
sound recordings and musical compositions.
…. Under these contracts, we may be required
to remove specific videos from the site, block
specific videos in certain territories, or
prevent specific videos from being reinstated
after a counter notification.
67
Will the Lenz decision impact trademark
fair use?
John Crosetto
68
TRADEMARK FAIR USE
“CLASSIC” (15 U.S.C. § 1115(b)(4)): Defendant
uses the mark other than as a trademark and
only to describe defendant’s goods or
services.
69
TRADEMARK FAIR USE
Nominative Fair Use: Defendant uses
plaintiff’s trademark to refer to the actual
trademark owner’s product or service.
• Plaintiff’s product or service not readily
identifiable without using plaintiff’s
trademark.
• Defendant uses only so much of the mark as
necessary to identify the plaintiff’s product or
service.
• The use must not imply any endorsement or
sponsorship by the trademark owner
70
71
72
Pop Quiz: Is the use Fair Use?
Bowman Neely and Angela Gallaway
73