Recently, while thinking about the future of copyright enforcement, I was reminded of one of Robin Williams’ comedic visions of the future. “In the future,” he quipped, “we’ll travel at the speed of light; they’ll have to lose our luggage beforehand.” The same sort of vision of the future seems to apply to copyright enforcement. While there are some aspects of enforcement that may change, some of the pitfalls will undoubtedly remain.
That said, if we look to the not-too-distant horizon, we can see that there are changes in store.
Copyright Small Claims
Although it may not happen next month or even next year, an alternative to traditional copyright enforcement is closer to becoming reality. We may soon see the creation of what’s essentially a copyright “small claims” court, where copyright owners will be able to seek compensation for instances of infringement without the expense associated with today’s federal court proceedings.
As it stands now, federal courts have exclusive jurisdiction over copyright infringement actions. That may be fine for big cases but for the run-of-the-mill claims of infringement, the federal court route can be a long and expensive proposition. Even with the current trend, which according to one economic survey suggests that the median fees associated with a copyright infringement action continue to decline, the stark reality is that it can still cost in well excess of $200,000 to pursue even a small infringement case through trial.
At the request of the U.S. House Judiciary Committee, the Copyright Office prepared a report detailing some of the challenges associated with small copyright claims in the current legal system. A copy of the report is publicly available on the copyright.gov website at copyright.gov/docs/smallclaims/usco-smallcopyrightclaims.pdf. Ultimately, the report recommended the creation of something like a small-claims court, administered by the Copyright Office, and even included some proposed legislation to establish the framework for the new “court.”
Some of the legislative ideas from the report finally made their way into legislation introduced in Congress in 2016. Rep. Hakeem Jeffries (D-NY) and Rep. Tom Marino (R-PA) sponsored the Copyright Alternative in Small-Claims Enforcement Act of 2016 (HR5757). Several months later, Rep. Judy Chu (D-CA) introduced the Fairness for American Small Creators Act (HR6496).
Each of these proposals would establish a voluntary system where relatively small claims of infringement could be submitted and resolved with minimal expense to the copyright owner. Infringement claims resolved in the proposed system would be limited to up to $15,000 per work and up to $30,000 per action.
Under the proposed system, copyright owners are permitted, but not required, to be represented by attorneys, and awards of attorney’s fees would be limited to cases involving bad faith conduct (and even then, the award would be limited to $5,000 if the copyright owner is represented by an attorney or $2,500 if the copyright owner proceeds without an attorney). One thing that won’t change under the proposed small claims system is the requirement that a copyright owner obtain a copyright registration.
In a press release, American Society of Media Photographers (ASMP) Executive Director Tom Kennedy praised the introduction of the Fairness for American Small Creators Act, saying that under the legislation, “Small creators would no longer be frustrated in their efforts to protect their works by the prohibitive and burdensome federal court process….”
Unfortunately, the Electronic Frontier Foundation (EFF), a nonprofit legal and policy organization promoting civil liberties and innovation in the digital world, didn’t share the ASMP’s views. In an open letter to the House Judiciary Committee, the EFF cautioned that the “small claims” proposal “raises serious risks of abuse by unscrupulous plaintiffs, and of pro-plaintiff bias.” The EFF “strongly oppose[d] the inclusion of a small claims tribunal at the Copyright Office.” Addressing the practices and problems presented by “copyright trolls,” the EFF argued that the federal courts have been vital to curbing abuse by such trolls. “A new tribunal intended specifically to adjudicate a high volume of copyright claims at low cost invites a new campaign of abuse for no benefit.”
It has been said that the best way to predict the future is to invent it, and it would seem that’s precisely what lawmakers are attempting to do. Rep. Jeffries and Rep. Marino are expected to re-introduce a modified version of their small claims bill this Congress. According to Chris Randle, legislative director and counsel for Rep. Jeffries, “[a]fter consulting with the major visual arts advocacy organizations, we have settled on a modified draft that we hope to introduce very soon.” It remains to be seen whether the small claims bill will have sufficient appeal to become law.
Fair Use Is Here To Stay
If there’s one truism regarding the future of copyright enforcement, it’s this: Fair use will continue to be a major issue in many cases.
As codified in the current Copyright Act, fair use requires consideration of four non-exclusive factors. If recent cases are any indication, there’s no limit to the number of arguments that may be raised in connection with each of the fair use factors.
Some of the relatively recent fair use cases have focused on the concepts of “transformation” and “transformative use.” These concepts are really sub-issues to the first of the fair use factors, which require courts to consider “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes.” However, recent cases may also suggest that those advocating for broadened application of fair use are changing up tactics.
No stranger to controversy, appropriation artist Richard Prince again finds himself defending against claims of copyright infringement brought by two professional photographers. The suits arise from Prince’s New Portraits exhibition, which includes a series of images that appear as though they were copies of Instagram posts.
In one case, California-based photographer Donald Graham sued Prince for infringement of his work Rastafarian Smoking a Joint, which became the basis for Prince’s Untitled. From a recent court opinion, it appears that Graham’s image appeared on Instagram, and Prince was able to obtain a copy of the image through that social media channel and Prince’s contribution was to position his own comment in closer proximity to the original post.
In another case, New York-based photographer Eric McNatt sued Prince for infringement of his portrait of musician Kim Gordon. The portrait had been made as part of an assignment for Paper, a fashion and pop culture magazine. Prince obtained an electronic copy of the portrait and posted it to his Instagram account, @richardprince4. [Ed. Note. Prince’s Instagram account is not functioning, as of this writing.]
As he did when Patrick Cariou sued him, Prince argued that his use of Graham’s and McNatt’s images constituted fair use. This time, Prince’s arguments were framed by the appeals court’s decision in Cariou’s case, which indicated that “[w]hat is critical [to determining whether a work is sufficiently transformative in nature] is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work.”
In the case involving Graham’s Rastafarian work, Prince contends that his use is transformative because a reasonable viewer would recognize Graham’s photograph simply as raw material, which is then used to convey a number of potential messages, any one of which is new and distinct from Graham’s effort to “capture the spirit and gravitas of the Rastafarian people.” As described in court submissions, “Prince’s work uses [Graham’s Rastafarian] as it has been incorporated within a social media post, making it clear to any reasonable observer that the focus of the artwork is no longer on the photograph itself, but its use in a social media post.”
Given the highly factual nature of the fair use factors, it’s unlikely that a court would be able to determine fair use issues on a motion to dismiss. Nonetheless, Prince and the other defendants sought dismissal of Graham’s case on fair use grounds. The court was unable to determine that a reasonable viewer “would conclude that Prince’s alterations imbued the original work ‘with new expression, meaning, or message,’” and therefore wouldn’t rule that Prince’s Untitled was transformative.
While it’s unsurprising that Prince’s defense team asserted fair use in an effort to end Graham’s case at its outset, other issues raised may signal a new approach to fair use cases. Prince also sought to limit any potential damage award at the outset of the case.
Pointing out that Graham’s complaint didn’t allege any actual “lost sales, licensing or other business opportunities,” Prince’s defense team argued that Graham shouldn’t be permitted to prove or recover any actual damages. Noting there was no legal authority to impose such a limitation, the court refused to do so.
Prince’s legal team also argued that any reasonable licensing fee will necessarily be lower than defendants’ profits from the sale of Prince’s Untitled. The court rejected this argument, too. In doing so, the court noted that when a copyright owner seeks an award of an infringer’s profits, the owner is only required to present proof of the infringer’s gross revenue attributable to the infringement, and the burden then shifts to the infringer to prove deductible expenses.
Undoubtedly, Prince’s team realized that the chances of winning a case on fair use grounds at the beginning of the case were extremely low. However, by attempting to limit damages at the outset, Prince’s legal team also sought to eliminate any incentive that Graham might have for proceeding with the case. Although Prince’s efforts to cut the case short failed, the fair use issues remain in the case; only time will tell whether the fair use issues will ultimately impact the final outcome of the case. Likewise, only time will tell if Prince’s litigation tactics will serve as a roadmap for others.
Tomorrow And Beyond…
As Nobel laureate Niels Bohr said, “Prediction is very difficult, especially if it’s about the future.” It remains to be seen when or if the copyright “small claims” court will become a reality. Still, it seems to be a safe bet that if a copyright “small claims” court is created, fair use will be a central issue in those cases, just as it will remain a feature of many enforcement actions in federal court.
Samuel Lewis is a Board Certified Intellectual Property Law specialist and shareholder at Cozen O’Connor in Miami, Florida, and a professional photographer who has covered sporting events for more than 30 years. He can be reached at [email protected] or [email protected].