Madden and the Likeness of Legends

The very popular video game, “Madden NFL” by Electronic Arts Inc. (“EA”) has been around for quite some time since its release in 1988.[1] One would think that for the most part, all the legal “kinks” would have been addressed and resolved by now involving all the aspects of the game. However, that is far from accurate. With the ever changing and increasingly more advanced graphics involved, issues have come up in recent years and continue today.

In 2010, Michael Davis and other former players filed suit against EA alleging that their rights of publicity were violated by including famous teams from the past in Madden games from 2001 to 2009.[2] Furthermore, EA did not obtain permission to use their names and likenesses as it did with current NFL players.[3] The players did not allege that their names appear in the games but rather that EA used real-life physical attributes, positions, relative skill, and other identifying factors that could be linked back to them.[4] This case continues to go back and forth in the courts.

In 2015, EA asked the U.S. Supreme Court to review whether it has a First Amendment right to use the likenesses of retired players, but the high court declined to hear the case, leaving in place a 2014 Ninth Circuit ruling that said EA did not.[5]

In February 2017, EA filed a motion for partial summary judgment on the players’ first cause of action, which is for a violation of California Civil Code Section 3344, the “unauthorized commercial use of name, voice, signature, photograph or likeness.”[6] EA argued that its visual representations of the former players are generic, and the statute the plaintiffs sued under only protects a person’s name, signature, voice, likeness, or photo.[7] EA continued saying that the courts have defined likeness under the statute as being the “visual image” of a plaintiff, and since the depictions of retired players in Madden games are not based on anyone’s actual appearance, the claim should fail.[8]

In support of its motion, EA referenced a Ninth Circuit case from 1992, White v. Samsung, where the court held that although Samsung used a robot in one of its commercials bearing a resemblance to Vanna White (the hostess of Wheel of Fortune), the defendant’s use of the robot did not meet the California Civil Code’s definition of “likeness,” as it still bore generic characteristics of a robot. Therefore, EA argued that just like the generic robot in White, “[t]he undisputed evidence shows that the avatars on historic teams . . . are generic and cannot be readily identified as plaintiffs (not even by plaintiffs themselves).”[9]

On March 9, 2017, in opposition, the players responded saying that it is obvious that the video game company relies on their likenesses for its Madden NFL game’s historic teams.[10] The players’ heights, weights, and playing attributes are reflected in the game, and the players are easily identifiable. The use of the historic players is actually a selling point for the game, the former players argued, as EA prides itself on presenting players as realistically as possible. [11] To quote from the opposition motion, the players argued, “It is self-evident that there can be no ‘historic’ or ‘all-time’ NFL teams without the actual players from those teams.” Consequently, “by naming the relevant features in Madden NFL ‘historic’ and ‘all time’ teams, there can be no dispute that EA sought to communicate to consumers that Madden NFL simulates actual historic players from those actual teams.”[12]

If EA’s motion to dismiss is granted, retired NFL players’ likenesses will go unprotected so long as the images being used are “generic,” and do not explicitly identify the players by name or use their real pictures.[13] However, if the motion is denied, video game creators will be exposed to liability every time they use generic sports avatars in their video games, and thus may be deterred from making games based off of real-life sports teams.[14]

This is ongoing and has been the topic of many other sports video game debates and the like. It would seem that the more advanced the graphics are becoming, the harder it will be to use the “generic” argument.

 

Moshe Fogel is a second-year student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal.


[1] See Madden NFL Covers Through the Years,  http://www.si.com/nfl/photos/2013/08/27/john-madden-football-video-game-covers# (last visited March 16, 2017).

[2] Fola Akinnibi, Ex-NFL Players Fire Back at EA in Madden Likeness Dispute, Law360 (Mar. 9, 2017, 5:02 P.M.) https://www.law360.com/sports/articles/900166/ex-nfl-players-fire-back-at-ea-in-madden-likeness-dispute.

[3] Id.

[4] Id.

[5] See Akinnibi, supra, note 2.

[6] Cal. Civ. Code § 3344; Matthew Perlman, EA Wants Quick Win On Claim in Madden Publicity Duel, Law360 (Feb. 16, 2017, 8:20 PM), https://www.law360.com/sports/articles/893067/ea-wants-quick-win-on-claim-in-madden-publicity-duel?nl_pk=47fc1e17-8b7e-4d9c-8a5e-54672e5b82f8&utm_source=newsletter&utm_medium=email&utm_campaign=sports (last visited March 20, 2017).

[7] Joseph M. Hanna, Are EA’s Visual Representations In Madden Generic Enough To Avoid Liability In Publicity Claim?, Sports and Entertainment Law Insider, https://sportslawinsider.com/are-eas-visual-representations-in-madden-generic-enough-to-avoid-liability-in-publicity-claim/ (Feb. 28, 2017).

[8] See Perlman, supra, note 6.

[9] Id.

[10] Brief for Plaintiff at 22, Davis v. Electronic Arts Inc., (775 F.3d 1172)(No. 10-CV-3328-RS).

[11] Id.

[12] Id. at 13.

[13] See Hanna, supra, note 2.

[14] Id.

What Was 5Pointz and What Does It Mean For the Visual Artists Rights Act?

Jonathan Cohen, better known by his “tag”[1] Meres One[2], is a freelance artist whose work has brought him much success and fame.  His clientele include sports teams and banks, and his works have been featured in music videos, newspapers, and galleries.[3]  In 1993, Cohen approached Jerry Wolkoff[4] and asked for permission to use the outside of his warehouse complex to showcase artwork.[5]  Wolkoff agreed, and thus 5Pointz, which The New York Times penned as a “Graffiti Mecca,” was born.[6]  As the embodiment of a controversial art form typically associated with vandalism, crime, and disjointedness, 5Pointz managed to defy traditional stereotypes.[7]  The media, artists, and observers alike have defined the buildings and the art as a type of ‘community,’[8] one that broke from traditional notions of solitariness that are typical in graffiti and street art culture.[9]  Its very name, signifying the coming together of New York’s extremely diverse and sometimes conflicted five boroughs,[10] promotes the aspects of inclusiveness, community, and cohesiveness that have transformed street art in recent years.

For the first few years, artists would produce works on the warehouse’s exterior walls, and although Cohen was seen as in charge, he functioned solely a painter, not a manager.[11]  Then, in 2002, Cohen took over as the curator and manager of the aerosol arts program Wolkoff had established.[12]  Wolkoff gave Cohen secured space in the warehouse to store materials[13] and placed only three restrictions on the art: no political statements, no religious statements, and no pornography.[14]  Cohen exercised almost complete control and influence over 5Pointz and under his guidance, it did not take long for 5Pointz to become a much-respected artistic institution and internationally recognized tourist attraction.[15]  Artists hoped to be lucky enough to have their works included on the space, and, in turn, tourists flocked to view the art.[16]  As The New York Times put it, “[b]lanketed with giddy images, drawing street artists from around the world, 5Pointz was a decades-old legal haven considered both a ‘United Nations of Graffiti’ and a semi-rebellious statement in a city some feel is growing too antiseptic.”[17]

After all the success, there was, however, an impending problem: Wolkoff was planning to rip the building down to create high-rise luxury apartment towers.[18]  The building’s attractive location in Long Island City, at a time where more and more residents were moving there, made the apartment towers a smart and profitable investment.[19]  Cohen and other 5Pointz artists, knowing the planned construction signaled the end of their art, flocked to court to ask the Judge for a preliminary injunction preventing Wolkoff from demolishing the building.[20]  But they were not successful, and artists, aspiring artists, fans, spectators, and tourists woke up on the morning of November 19, 2013 to find 5Pointz whitewashed.  Over night, their years of artwork painted over with simple streaks of white paint.[21]  ANIMALNewYork, a website that has been described as “a graffiti and street art site,”[22] documented the demolition and later posted a minute-long video that was time-lapsed.  The video shows demolition of 5Pointz between September and December 2015.[23]

In their complaint for an injunction, Cohen and his co-plaintiffs argued that their works should have been afforded protection under VARA.[24]  To the art world’s surprise, this was the first suit that “a court has had to determine whether the work of an exterior aerosol artist – given its general ephemeral nature – is worthy of any protection under the law.”[25]  Judge Block went on to address VARA and ultimately had to look at four elements: (1) the art was a work of visual art; (2) the art was of recognized stature; (3) the art was or will be destroyed; and (4) the art was copyrightable.[26]  Block interpreted parts 1 and 3 effortlessly, deciding that graffiti is a work of visual art and if at any point Wolkoff decided to tear down his warehouse their art would indefinitely be destroyed.[27]  The question of recognized stature, part 3, was the wild card, and left room for Judge Block to interpret what recognized stature really means and if Cohen and the other artist’s works could be protected[28].

The court received plentiful and strong evidence of what most would consider reaching stature, specifically at the preliminary injunction hearing.[29]  At this hearing, “…[t]he Court heard testimony from three of the seventeen plaintiffs, the defendant Gerald Wolkoff, who is the principal owner of the defendants’ real estate development companies, and purported expert witnesses from each side.  The Court also received as evidence a number of exhibits That they claim were works of ‘recognized stature.’”[30]  Marie Flageul[31] cited 5Pointz as a public attraction, a place that was the backdrop of many photo shoots and was even featured in twelve minutes of a movie.[32]  The Cohen court ultimately did not grant the preliminary injunction to the artists.[33]

The court’s holding stems from evidence that Cohen and the other plaintiffs were aware of, and accepted, the temporary status of their art.[34]  It is unclear why this knowledge grants them a lesser degree of protection under VARA, because VARA was specifically created to support moral rights.[35]  Another distressing point is the Court used 5Pointz’s transience as a reason to not be afforded protection under VARA, while at the same time holding that “[s]ince, as defendants’ expert correctly acknowledged, VARA protects even temporary works from destruction.”[36]  This leaves the masses with authoritative, though not binding, information that could lead to a slippery slope.  The still unanswered future question is what the courts would hold if VARA did apply to protect temporary graffiti art, since here the argument was not successful.  As seen in Cohen, VARA is in much need of amendment.  While there has been such scholarship on what the shape these amendments would form, Congress has yet to amend any parts of the statute.

 

 

Sophia Soloff is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal.  She is a student legal intern at the Bet Tzedek Clinic, assisting in wide-ranging civil litigation.  She looks forward to a career in corporate law.


[1] Chad, The Words: A Graffiti Glossary, Art Crimes, https://www.graffiti.org/faq/graffiti.glossary.html.

[2] http://5ptz.com/meres/Bio.html.

[3] Id.

[4] Christopher Cameron, 5Pointz Unvarnished: The Developer’s Side, The Real Deal, (May 1, 2014), http://therealdeal.com/issues_articles/5pointz-unvarnished-the-developers-side/.

[5] See Plaintiff’s Original Complaint at 40, Cohen v. G&M Realty L.P., 988 F. Supp. 2d 212 (E.D.N.Y. 2013) (No. CV13-5612), 2013 WL 5726692 [hereinafter Plaintiff’s Original Complaint].

[6] Cara Buckley, Night Falls, and 5Pointz, a Graffiti Mecca, Is Whited Out in Queens, The New York Times (November 19, 2013), http://www.nytimes.com/2013/11/20/nyregion/5pointz-a-graffiti-mecca-in-queens-is-wiped-clean-overnight.html?_r=0.

[7] Leigh Silver, Remembering 5Pointz: A Community Reminisces on What Was So Much More Than Just a Legendary Graffiti Spot, Complex, (November 9, 2014), http://www.complex.com/style/2014/11/remembering-5-pointz.

[8] Id.

[9] Id.

[10] Cohen, 988 F. Supp. 2d at 214.

[11] Bruce Wallace, Remembering 5Pointz: A Five-Story Building That Told Plenty More, NPR, (November 21, 2013), http://www.npr.org/2013/11/21/246549375/remembering-5pointz-a-five-story-building-that-told-plenty-more.

[12] See Plaintiff’s Original Complaint at 42.

[13] Id. at 43.

[14] Id. at 44.

[15] Robert Tutton, In a Brooklyn Lumber Yard, ‘Graffiti Mecca’ 5Pointz Lives On, Curbed NY, (September 29, 2015), http://ny.curbed.com/2015/9/29/9916136/in-a-brooklyn-lumber-yard-graffiti-mecca-5pointz-lives-on.

[16] Cara Buckley, Night Falls, and 5Pointz, a Graffiti Mecca, Is Whited Out in Queens, The New York Times, (November 19, 2013), http://www.nytimes.com/2013/11/20/nyregion/5pointz-a-graffiti-mecca-in-queens-is-wiped-clean-overnight.html?_r=0.

[17] Id.

[18] Id. at 3.

[19] Id. at 4.

[20] See Cohen, 988 F. Supp. 2d at 214.

[21] Id. at 1.

[22] Andy Cush, Animal New York, the Grimiest Website in NYC, Shuts Down After 12 Years, Gawker, (July 15, 2015), http://tktk.gawker.com/animal-new-york-the-grimiest-website-in-nyc-shuts-dow-1720634772.

[23] Aymann Ismail, Watch the Months-Long Demolition of 5 Pointz in a One-Minute Timelapse, Animal New York, January 8, 2015, http://animalnewyork.com/2015/watch-months-long-demolition-5-pointz-one-minute-timelapse/.

[24] Cohen, 988 F. Supp. 2d at 214.

[25] Id. at 214.

[26] Rebecca E. Hatch, Cause of Action for Destruction of “Work of Visual Art” of “Recognized Stature” Under Visual Artist Rights Act (VARA), 17 U.S.C.A. §106A, 63 Causes Of Action 2D 649 (July 2015).

[27] Cohen, 988 F. Supp. 2d at 227.

[28] Id. at 226.

[29] Cohen, 988 F. Supp. 2d at 215.

[30] See Cohen, 988 F. Supp. 2d at 214–15.

[31] Id. at 219.

[32] Id. at 17.

[33] Id. at 214.

[34] See Cohen, 988 F. Supp. 2d at 214.

[35] Brett Sirota, The Visual Artists Rights Act: Federal Versus State Moral Rights, 21 Hofstra L. Rev. 462 (1992).

[36] Cohen, 988 F. Supp. 2d at 227.

Media Coverage and the First Amendment: Did Recent White House Exclusion of Journalists from Briefings Violate the Constitution?

Potential First Amendment violations involving freedom of the press are of growing concern, especially in the wake of controversy surrounding Trump’s criticism of the media. The president is certainly entitled to his own First Amendment protection when disapproving of the media and its reporting. However, his continuous attempt to undermine its authority and infringe on journalists’ right to free speech has incredibly damaging consequences that may unjustly bias public perception of the president’s authority at the expense of public access to information.

A Manhattan federal judge issued a preliminary ruling on Monday, holding that the New York Police Department “may have violated the First Amendment by revoking the press credentials of a journalist.”[1] The Judge further held that news outlets cannot be excluded from briefings or coverage on an arbitrary basis.[2] Following the ruling, various journalists from news outlets such as The New York Times, CNN, and The Huffington Post were banned from a White House briefing by the White House press secretary.[3] Director of the Knight First Amendment Institute at Columbia University contended that the White House’s recent exclusion of news organizations from briefings violated the Judge’s ruling.[4] He claims that it is unconstitutional to prohibit reporters from live coverage merely on the basis that one disagrees with their reporting; he deems this a form of viewpoint discrimination.[5] First Amendment experts contend that the decision to exclude certain news outlets while allowing others access to press passes and public forums must be evaluated impartially rather than using discriminatory tactics based on personal dissatisfaction with their work and opinions.[6] Even the White House Correspondents’ Association board conceded that the matter was handled inappropriately by the White House, urging that they were “strongly against” the press team’s conduct in excluding journalists from the briefing.[7]

Nonetheless, it must be acknowledged that not all instances of banning journalists based on disapproval of their work constitute First Amendment violations. A federal appeals court held that a governor preventing state employees from communicating with two reporters because he did not like their reporting was not a First Amendment violation.[8] Moreover, not all legal experts are troubled by the recent White House conduct; a Standard law professor argues that disagreement with the reporting of certain journalists should not be discouraged but should rather motivate journalists to more professionally and accurately portray political figures such as Trump.[9]

Although journalism is an aggressive and competitive profession whereby only select journalists are chosen for exclusive interviews or given access to information not available to the public, their access to “press credentials and seats at government news conferences” are typically afforded greater First Amendment protections than other forms of news gathering.[10] According to the United States Court of Appeals for the District of Columbia, the freedom of the press “requires that this access [to White House press facilities] not be denied arbitrarily or for less than compelling reasons.”[11] Although it is not yet clear whether excluding journalists from the White House briefings was unconstitutional, there may be various interests at stake if this conduct is accepted in future situations.

Not only do First Amendment protections benefit the journalists, their professional work, and the news outlets for which they work, there is also a significant public interest in limiting their restricted access to information, despite White Office officials’ disapproval of their reporting styles. The public is ultimately at the greatest risk if the president may constitutionally limit journalists and/or news outlets from covering press events based on his own personal preferences. This would potentially cause the president to use his own agenda to shape public perception, while dissuading journalists from reporting what they perceive to be the truth in fear of retaliation. The Associated Press director of media relations contends that the public benefits from “as much access to the president as possible.”[12] Trump has responded to this argument by claiming that some of these large media corporations do not prioritize the public’s best interest but are rather trying to exert their power and influence to effectuate their own plans.[13]

According to a leading First Amendment lawyer, the “daily denigration of the press as the enemy of the American people and statements that the use of confidential sources by journalists ‘shouldn’t be allowed’ is both novel and dangerous.”[14] Another law professor at George Mason University acknowledged that although it is acceptable for presidents to reprimand the media for bias and inaccurate reporting, Trump’s attempt to “delegitimize” the media is far more problematic.[15] Moreover, whether or not exclusion from the briefings was in fact a First Amendment violation, it is still important to consider that it may have violated well-established norms of freedom of the press that must not be disregarded with such a nonchalant attitude. In condemning the White House’s actions, the White House Correspondents’ Association criticized White House conduct for violating media coverage protocol, implying that they also violated accepted norms of journalism and fair access to information.[16]

It is undetermined whether prohibiting journalists’ access to recent White House briefings violated the First Amendment. Although there are meritorious arguments supporting both sides, delegitimizing the public’s perception of the media has important legal and policy implications. The Trump Administration has already pushed the boundaries of many commonly accepted norms, and it is feared that permitting the administration to risk constitutional violations without consequence has the power to set a dangerous precedent that should not be overlooked.

 

 

Cristiana Modesti is a second-year law student at the Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is currently a legal intern for the New York State Attorney General’s Office and is striving to pursue a career in labor and employment or securities law. More information about her credentials is available on her LinkedIn profile, which can be located at https://www.linkedin.com/in/cristiana-modesti-4a209a136/.


[1] Adam Liptak, Barring Reporters From Briefings: Does it Cross a Legal Line?, New York Times (Feb. 28, 2017), https://www.nytimes.com/2017/02/28/us/politics/white-house-barring-reporters-from-briefings.html?rref=collection%2Ftimestopic%2FFirst%20Amendment%20(US%20Constitution)&action=click&contentCollection=timestopics&region=stream&module=stream_unit&version=latest&contentPlacement=1&pgtype=collection.

[2] Id.

[3] Tara Golshan, The White House just barred major media outlets from a press briefing, Vox (Feb. 24, 2017 2:30 PM), http://www.vox.com/policy-and-politics/2017/2/24/14729078/white-house-banned-media-outlets-press-briefing.

[4] Liptak, supra note 1.

[5] Id.

[6] Id.

[7] Golshan, supra note 3.

[8] Baltimore Sun Company v. LP LLP. No. 05-1297.

[9] Liptak, supra note 1.

[10] Id.

[11] Id.

[12] Christina Prignano, Media outlets blocked from White House press briefing, Boston Globe (Feb. 24, 2017), https://www.bostonglobe.com/news/nation/2017/02/24/media-outlets-blocked-from-white-house-press-briefing/bk90JskdD2TRG33TMcfeEM/story.html.

[13] Id.

[14] Liptak, supra note 1; Golshan, supra note 3; Julie Hirschfeld Davis & Michael M. Grynbaum, Trump Intensifies His Attacks on Journalists and Condemns F.B.I. ‘Leakers’, New York Times (Feb. 24, 2017), https://www.nytimes.com/2017/02/24/us/politics/white-house-sean-spicer-briefing.html (“President Trump turned the power of the White House against the news media on Friday, escalating his attacks on journalists as “the enemy of the people”. . .)

[15] Liptak, supra note 1.

[16] Yaron Steinbuch, White House bars several media outlets from press conference, New York Post (Feb. 24, 2017), http://nypost.com/2017/02/24/white-house-bars-several-media-outlets-from-press-conference/.

Second Round Note Publication Announcement

It is our distinct pleasure to announce that the following students’ Notes have been selected for publication in Volume 36 of the Cardozo Arts and Entertainment Law Journal:

 

Stuart Anello
Matthew Barish
Michael Del Priore
David Forrest
Madeline Kessler
Matthew LoBello
Jessica Mauceri
Cristiana Modesti
Jessica Rosen
Casey Thomas
Ryan Thorne

 

Congratulations on your accomplishment!

Copyright Law in a Social Media World

There is no denying that social media has taken over our society. Even those who are not well versed in social media have a basic understanding of what it does and how it operates. With this emergence of social media, each industry has had to adapt practices and policies in order to comply with social media and to “keep up with the times” and with the law. The legal world is one that is still trying to navigate through the waters of social media, and they have done so by creating “social media law”. These laws directly effect copyright law, as many things posted on the internet now face the question of whether or not they are protected by traditional copyright laws or whether they fall under fair use standards.[1]

Whether or not photographs posted on certain social media cites, such as Instagram, Twitter and Facebook, is an issue the law has yet to resolve. When an author creates a work as the original author and owner of a valid copyright, they have the exclusive right to display and distribute that work, as well as the exclusive right to make derivative works.[2]

In Davis v. Tampa Bay Arena LTD, an issue arose between a photographer who was hired by the Tampa Bay Arena in order to take pictures of the arena for promotional purposes.[3] Once Davis took the photos of the arena, the arena used Davis’ work without his permission and posted the images on its Facebook page.[4] The original agreement between the two parties had no reference to social media cites but only “newsletters, advertising, display prints, broadcast and the web site,” for the arena.[5] The photographer sued the arena, stating that they had violated his derivative works right. According to Davis, the Facebook posts were an entirely different media and, since he was the author and owner of the copyright, he had the first right to publish his material on a different media then agreed to.[6] The case ultimately settled and the Arena and Davis redrafted the contract to include social media rights.[7] This case highlights an important aspect in social media law: not many companies recognize the new media and do not realize the implications of doing so. In order to avoid issues, lawyers must draft contracts diligently in order to cover each and every medium.

Another social media law issue is demonstrated in Agence France Presse v. Morel.[8] This case established the principal that, even if something is posted on the internet, it does not mean that it automatically enters into the public domain.[9] In this case, Morel, a news photographer, was on the seen of the Haiti earthquake in 2010.[10] Morel tweeted one of the pictures that he took on his personal twitter feed. Agence France Presse, a large news company, took the picture from Morels’ twitter and printed it in their own newspaper – after the picture went viral.[11] The question was whether or not Morels’ photo was publishable as public domain or if France Presse had violated copyright. The court found that the picture was not publishable outside of twitter and that France Presse had infringed Morel’s copyright by publishing the photo without his approval. Each social media site has its own terms of use governing copyrights.[12] In Twitter’s terms of use, photos are allowed to be “retweeted” freely and used within the Twitter website but they cannot leave the Twitter bubble without the explicit permission of the author.[13]

The courts are largely divided in social media law between those who see shareable content as free for sharing and those who feel it is necessary to seek copyright approval from the owner before sharing.[14] “Social” normally suggests an issue that would fall under the fair use definition, which states “fair use is any copying of copyrighted material done for a limited and ‘transformative’ purpose, such as to comment upon, criticize, or parody a copyrighted work.”[15] The transformative aspect is a defense  to copyright infringement, wherein one would argue that the work was transformed in such a way then it can be considered fair use and not a violation of copyright law.[16] A Fox News reporter posted the iconic picture of New York City fire fighters raising the flag on Ground Zero after the 9/11 attacks, superimposed with a photograph of American soldiers raising the flag on Iwo Jima during World War 2.[17]  When the original owner of the 9/11 image brought suit against Fox, Fox argued that the image was sufficiently transformed and, therefore, did not infringe.

What does this mean for lawyers? Since the boundaries are so fine, it is important to stick to strict guidelines while posting on the internet.[18] One commentator argues that, in order to comply with copyright law in terms of social media, there are only three scenarios where content should be shared: 1) Where you are the original author and have created the content yourself; 2) Where a license has been granted by the original author or you have bought the copyright; and 3) Where the use of the photo is considered “fair use”.[19]

As social media is ever-changing and new sites are popping up seemingly every day, copyright law will forever be on its toes protecting the authors from infringement on the internet.

 

Morgan Romagna is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. In addition, Morgan is the Alumni Director of the Sports Law Society and looks forward to a career in licensing and intellectual property law.


[1] Jean Murray, Copyrights and Social Media Issues: Fair Use, Licenses, and other Issues, The Balance (July 7, 2016), https://www.thebalance.com/copyrights-and-social-media-issues-397821.

[2] Copyright 101, Colo. St. U., http://socialmedia.colostate.edu/copyright/, (Last Accessed February 22, 2017).

[3] Darren Spielman, Tampa Arena’s Violation of Implied License for Photos Not Copyright Infringement, Complex IP, (Aug. 2, 2013) https://www.complexip.com/tampa-arenas-violation-of-implied-license-for-photos-not-copyright-infringement/.

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Agence France Press v. Morel ,769 F.Supp.2d 295 (S.D.N.Y 2011).

[9] Id.

[10]Id.

[11] Id.

[12] Id.

[13] Twitter Copyright Policy, https://support.twitter.com/articles/15795 (last visited February 22, 2017).

[14] Copyright and Fair Use, Stan. U. Libr., http://fairuse.stanford.edu/overview/fair-use/what-is-fair-use/ (Last Accessed Feb. 22, 2017).

[15] Id.

[16] Id.

[17] Andrew Chung, Fox News, Publisher, Settle Copyright Dispute Over Iconic 9/11 Photo, Reuters (February 16, 2016), http://www.reuters.com/article/us-ip-fox-news-photo-idUSKCN0VP2HY.

[18] Keir Baker, Social Media Law: An Essential Guide, The Guardian, (Aug. 12, 2016), https://www.theguardian.com/law/2016/aug/12/social-media-law-an-essential-guide.

[19] Id.

Old Copyright Suits May Be On the Rise Due to “Raging Bull”

A new door has opened regarding copyright infringement suits, both old and new, due to the ruling in Petrella v. MGM.[1] The Copyright Act states that “no civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.”[2] In simpler words, the statute of limitations for copyright infringement is three years. “If infringement occurred within three years prior to filing, the action will not be barred even if prior infringements by the same party as to the same work are barred because they occurred more than three years previously.”[3]

It is widely recognized that the separate-accrual rule attends the copyright statute of limitations. Under that rule, when a defendant commits successive violations, the statute of limitations runs separately from each violation. Each time an infringing work is reproduced or distributed, the infringer commits a new wrong. Each wrong gives rise to a discrete “claim” that “accrue[s]” at the time the wrong occurs. In short, each infringing act starts a new limitations period.[4]

In 2014, the Petrella court, in a 6-3 decision, voted against laches as a defense. The case involved an infringing work, a motion picture screenplay copyrighted in 1963 titled “Raging Bull.”[5] The work was based on Jake LaMotta, a boxing champion, and Frank Petrella.[6] The two men “assigned their rights and renewal rights, which were later acquired by respondent United Artist Corporation, a subsidiary of respondent Metro-Goldwyn-Mayer, Inc. (collectively, MGM).”[7] Frank Petrella died during the initial copyright term and his renewal rights reverted to his heirs[8] as confirmed by the case Stewart v. Abend.[9] His daughter, Paula, became the sole owner of the copyright in 1991 when she renewed the rights.[10] Seven years later, she informed MGM that their exploitation of the motion picture violated her sole right[11]and threatened to bring a law suit.[12] Nine years later she filed an infringement suit “limited to acts of infringement occurring on or after January 6, 2006.”[13] MGM moved for summary judgment on the basis of laches.[14] They argued that Petrella’s 18-year delay in filing suit was “unreasonable and prejudicial to MGM.”[15] Both the District Court and the Ninth Court held that laches barred Petrella’s complaint.[16] The Supreme Court reversed.[17]

Before understanding the Supreme Court’s reasoning, it is important to comprehend the concept of laches. Laches is a “doctrine permitting dismissal of a suit because a plaintiff’s unreasonable delay in asserting a right or privilege has been detrimental to the defendant’s ability to make a defense.”[18] Take Chirco v. Crosswinds Cmyts., Inc, a case cited in Petrella. There the defendants were alleged to have used the plaintiff’s copyrighted architectural designs. Even though plaintiffs were aware of defendant’s project, they didn’t act to cease development until 169 of the planned 225 condominiums were built.[19] The Sixth Circuit found that relief would be inequitable because they failed to stop the project until it was near completion and it would pose “unjust hardships” upon both the defendants and third parties.[20]

In Petrella, the Supreme Court reversed the lower court rulings and held that the “Copyright Act’s three-year look back provision allowed for plaintiffs to defer filing suit until such time that litigation appears to be a potentially beneficial venture.”[21] Because of the separate-accrual rule, “every act of infringement is essentially subject to its own statute of limitations, meaning that any of MGM’s sales in the three years prior to 2009 fell within the time limit, and future sales could potentially be stopped.”[22]

So what does this mean for the entertainment industry? Advocates of the ruling believe that the playing field will now be leveled, since it “has previously been heavily slanted in favor of entertainment studio defendants.”[23] Entertainment industry groups believe that “this ruling will have a chilling effect on innovation that will be very deleterious to the entertainment industry as a whole.”[24] Now, in the digital age, works have a longer self-life and the potential to be re-released[25] and laches have been a common defense to these entertainment groups.[26] Since Petrella, the entertainment industry has seen potential for a significant dispute to rearise. The case revolves around the famous song “Stairway to Heaven” by Led Zeppelin. The estate of Randy Craig Wolfe, guitarist for the 1960s band “Spirit” claims that Led Zeppelin copied the opening guitar riff of “Stairway to Heaven” from a Spirit’s song called “Taurus.”[27] Back then a suit was never filed.[28] Now, with Petrella, the estate may have a viable claim and could potentially recover three years’ worth of profits from such a classic song.[29]

The “Stairway to Heaven” case now raises a serious dilemma: plaintiffs can now wait and see if it is worth it bring suit against the alleged copyrighted work. A “plaintiff can ‘wait out’ the years in which it knows deductible expenses will be high, and sue only in those years where the profit margin is large.”[30] This scenario was addressed in Justice Breyer’s dissenting opinion:

“[S]uppose the plaintiff has waited until he becomes certain that the defendant’s production bet paid off, that the derivative work did and would continue to earn money, and that the plaintiff has a chance of obtaining, say, an 80% share of what is now a 90% pure profit stream.”[31]

This does not mean that there is no hope for copyright infringement defendants. The court did leave some options available, such as “equitable estoppel,” which would come into play when a plaintiff deceived a defendant into believing that it would not sue and the defendant relied on that assurance. Furthermore, when deciding these cases, a court may adjust plaintiff’s relief based on its delay in filing suit. These are both very broad options, so it is now on the industry to take stricter measures when protecting their copyrights. Some measures these companies can take include, but are not limited to, having even more elaborate document retention systems, “paper all aspects of creation and production,” provide “comprehensive indemnification agreements and present any documentation evidencing creation,” and make sure to keep in touch with former employees that worked on the project in case witnesses are needed later on.[32]

The Petrella decision has both pros and cons, depending on what side of the suit you’re on. The holding does seem to benefit plaintiffs, but maybe in subsequent cases that arise, due to Petrella, the courts will come up with more viable options for defendants.

 

Leeor Amsalem is a 2L at Benjamin N. Cardozo School of Law and a staff editor on the Cardozo Arts and Entertainment Journal. She looks forward to taking her passion for entertainment and turning it into a successful career.


[1] 134 S. Ct. 1962 (2014).

[2] 17 U.S.C. § 507(b).

[3] Nimmer on Copyright 12.05 (B)(1)(b).

[4] 34 S. Ct. 1962.

[5] Id.

[6] Id at 1964.

[7] Id.

[8] Id.

[9] 495 U.S. 207, 221 (1990).

[10] Id.

[11] Id.

[12] Id at 1965.

[13] Id.

[14] Id.

[15] Id.

[16] Id.

[17] Id.

[18] Laches, Miriam WEbster Dictionary

[19] Chirco v. Crosswinds Cmtys., Inc., 474 F.3d 227 (6th Cir. 2007).

[20] Id.

[21] Todd McCormick, How ‘Raging Bull’ Case Could Impact Entertainment Industry, Law360 (July 2, 2014, 10:08 AM), https://www.law360.com/articles/552689/how-raging-bull-case-could-impact-entertainment-industry.

[22] Daniel Fisher, ‘Raging Bull’ Decision Breathes New Life Into Late-Breaking Copyright Suits, Forbes (June 2, 2014, 9:52 AM), http://www.forbes.com/sites/danielfisher/2014/06/02/raging-bull-decision-breathes-new-life-into-late-breaking-copyright-suits/#3b385a344190.

[23] Supra note 21.

[24] Id.

[25] Supra note 22.

[26] Id.

[27] Supra note 21.

[28] Id.

[29] Id.

[30] Id.

[31] 134 S. Ct. 1962 (2014).

[32] Supra note 22.

B.Y.O.D. – Bring Your Own Device

Traditionally, employers have issued company-owned devices to their employees. This traditional approach has allowed employers to have more control of and access to employees’ devices. Currently, employers are generally free to monitor its employees’ text messages or online activity for business purposes. Under federal law, an employer is legally able to monitor or intercept its employees’ oral, wire, or electronic communications in the ordinary course of business.[1] The law provides employers with an ability to do so under two requirements: 1) the employer must provide the device to its employees to use for company purposes and 2) the device has to be used in the ordinary course of business.

In more recent years, employers have shifted to a more contemporary approach, implementing a Bring Your Own Device (hereinafter “BYOD”) program.[2] The BYOD program allows employees to use their personal devices in the workplace for work-related matters. Companies secure their employees’ devices by investing in a mobile device management solution to enforce policies and monitor its employees’ usage and access.[3] Companies also enforce industry standard security policies, such as implementing a whole-device encryption and have the ability to remotely wipe all data and hard-drive memory once an employee leaves the company.[4] The BYOD policy raises a handful of privacy concerns because it blurs the line between personal and corporate usage, as well as the scope of employee monitoring.[5]

In two recent cases, there has been a split among district courts. In In Re Pradaxa,[6] the court found that the employer had control over its employees’ text messages on their personal devices.[7] In this case, the employers alleged failure to preserve various types of evidence, including business related text messages that were on the employees’ personal devices.[8] The court held that although it was the employer’s responsibility to monitor and preserve text messages on company-issued phones, the employees here were also required to give up any business related text message sent and received from their personal phones.[9]

In another recent case, the court found that the employer did not have control over its employees’ text messages on their personal devices.[10] The court held that the employer, Costco, was not required to uncover text message contents from its employees’ personal devices because the text messages located on these personal devices were not within Costco’s “possession, custody, or control.”[11] As a result, the court did not allow the employer to receive the contents from its employees’ personal devices.

The United States should follow the European Union’s approach for employee monitoring. For example, the European Union implemented a new data protection framework, known as the General Data Protection Regulation.[12] This regulation empowers data protection regulators to impose administrative fines of 20 million Euro for most violations or 10 million Euro for less serious violations.[13] Article 81 of European Union’s General Data Protection Regulation implemented a stricter processing compliance method for the processing of employee data in the European Union.[14] The regulation applies to all European Union residents, regardless of citizenship. As a result, U.S. citizens living or working in European Union are entitled to all of European Union’s regulation’s protections.

The U.S. not only needs to follow the European Union’s approach regarding privacy regulations, but it also needs to implement its own strict and uniform BYOD policy that does not implicate privacy law protections for employees. For instance, employers should be mandated to create a BYOD policy that is flexible and effective, yet one that limits security and privacy risks. Employers should be responsible for creating secure security measures for the BYOD devices and also educating its employees on the risks and benefits of participating in a BYOD program. Companies may do so by conducting extremely informative orientation meetings for new hires. In this orientation, the company could lay out the specific functions and utilities of BYOD devices. It should further stress the harms that come with using the BYOD program and also state that employees have the option of being given a company-issued phone.

New technology tools, such as the BYOD programs have increased the ability for employers to track, observe, and monitor their employees. It is important to try and keep up with this groundbreaking advancement of technology and implement appropriate regulations to protect the privacy interests of employees.

 

Jennifer Hwang is a second-year law student at Benjamin N. Cardozo School of Law and a Staff Editor of the Cardozo Arts & Entertainment Law Journal. She is interested in privacy law and looks forward to a career in Intellectual Property.


[1] 18 U.S.C. § 2510(5)(a) (2010).

[2] Dean Evans, What is BYOD and Why is it Important?, TechRadar.Pro, http://www.techradar.com/news/computing/what-is-byod-and-why-is-it-important-1175088 (last visited February 12, 2017).

[3] Id.

[4] Id.

[5] Mary Shacklett, 10 BYOD Concerns That Go Beyond Security Issues, TechRepublic, http://www.techrepublic.com/blog/10-things/10-byod-concerns-that-go-beyond-security-issues/ (last visited February 12, 2017).

[6] In Re Pradaxa, No. 3-13-cv-51582-DRH-SCW, 2013 WL 6486921 (S.D. Ill. Dec. 9, 2013).

[7] In Re Pradaxa, 2013 WL 6486921, at *18, *20.

[8] In Re Pradaxa, 2013 WL 6486921, at *1, *16.

[9] In Re Pradaxa, 2013 WL 6486921, at *18.

[10] Cotton v. Costco Wholesale Corp., No. 12-2731-JW, 2013 WL 3819974 (D. Kan. July 24, 2013).

[11] Cotton, 2013 WL 3819974, at *6.

[12] Reform of EU Data Protection Rules, Justice, http://ec.europa.eu/justice/data-protection/reform/index_en.htm (last visited February 15, 2017).

[13] Philip Gordon, Ten Steps for U.S. Multinational Employers Toward Compliance With Europe’s New Data Protection Framework – The General Data Protection Regulation, Littler, https://www.littler.com/publication-press/publication/ten-steps-us-multinational-employers-towards-compliance-europe%E2%80%99s-new (last visited February 15, 2017).

[14] The European Parliament proposal for the new EU General Data Protection Regulation may severely restrict European epidemiological research, PMC, https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4033829/ (last visited February 15, 2017).

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