The Fair Use Quandary

Much has been written recently regarding Jay Maisel’s enforcement of his copyrights, and especially of the demand that he made against Portland, Oregon-based Andy Baio, a self-described writer and tech entrepreneur, arising from Baio’s unauthorized use of the cover art from one of Miles Davis’ records. The vast majority of commentary has been overtly biased, denouncing and even personally attacking Maisel for no reason other than because he had the audacity to enforce his copyrights. Nonetheless, the relevant facts and some of the commentary regarding the dispute merit consideration and present some valuable lessons for anyone who might become involved in a copyright dispute.

Andy Baio posted this series of increasingly pixelated images on his blog with the question, "Where would you draw the line?"

The (Relevant) Facts

Baio described the background of his dispute with Maisel on his blog,, in an entry entitled "Kind of Screwed." He produced an album named Kind of Bloop, an 8-bit chiptune tribute to Miles Davis’ album Kind of Blue. (Chiptune music is synthesized electronic music, sometimes produced using sound chips from older computers or video game systems; chiptunes have appeared in mainstream pop music, including Ke$ha’s 2009 hit, TiK ToK.) According to Baio, "I went out of my way to make sure the entire project was above board, licensing all the cover songs from Miles Davis’ publisher and giving the total profits from the Kickstarter fundraiser to the five musicians that participated.

"But there was one thing I never thought would be an issue: the cover art," explains Baio. "Before the pro-ject launched, I knew exactly what I wanted for the cover—a pixel art re-creation of the original album cover, the only thing that made sense for an 8-bit tribute to Kind of Blue."

The original album cover featured a now iconic Maisel photograph of Miles Davis playing the trumpet. Using dramatic lighting to emphasize the few visible elements and allow the background to go black, the image features a tight shot of Davis playing the trumpet, his eyes closed, with a determined and almost happy look on his face. Davis’ hands are visible on the trumpet, with the instrument beyond his hands being cropped out of the image as it appeared on the cover. After several failed efforts to pixelate the original cover image, Baio asked a friend to re-create the cover image.

In an article regarding the dispute entitled "Kind of A Dick Move" and published on Gizmodo, Mat Honan compared the transformation of the cover art to the music itself: "…the album art transforms Maisel’s iconic image in much the same way that the music itself transformed Davis’ tunes."

Although Baio went through the exercise of licensing the songs from the record label holding the rights to Davis’ music on Kind of Blue, he made no effort to license the cover art. "I never attempted to contact Maisel for a license because I thought, and still think, that I didn’t need one," Baio explained. "I believe that both the music and artwork are sufficiently transformative that they’d be covered by [the] fair use doctrine." Baio admits, however, that he didn’t consult with an attorney when putting together the project or licensing the music. "Like most people, I don’t have an attorney handy to ask about my personal projects."

When asked whether, if he had it to do over again, he would attempt to license the image from Maisel, Baio explained that it wouldn’t have made a difference. "Maisel stated explicitly he never would have licensed the image in the first place. So, no, I wouldn’t have tried, and a license wouldn’t have been granted if I did." However, Baio did admit that if he had it to do over again, he would have used a completely different cover.

Baio used Kickstarter to raise funding for the project, which achieved its funding goal in August 2009. The album was released August 17, 2009, with 300 CDs pressed (the album was and is also available via digital download). In February 2010, attorneys representing Maisel contacted Baio. The demand letter Baio received alleged that he was infringing on Maisel’s copyrights by using the image on the cover for Kind of Bloop, as well as in a video Baio made for the album’s release. The letter also included fairly standard language indicating that Maisel was seeking "either statutory damages up to $150,000 for each infringement at the jury’s discretion and reasonable attorney’s fees for actual damages and all profits attributed to the unlicensed use of [Maisel’s] photograph…."

After months of "legal wrangling," Baio settled, paying Maisel $32,500 for the unauthorized use of Maisel’s photograph and agreeing not to use the image (or unauthorized artwork based upon the image) again. "I’m not exactly thrilled with this outcome, but I’m relieved it’s over," says Baio. "Despite my firm belief that I was legally in the right, I settled out of court to cut my losses. This ordeal was very nerve-wracking for me and my family…."

However, Baio continues to assert that he wasn’t liable for copyright infringement. "My lawyers and I firmly believe that the pixel art [version of Maisel’s photograph] is ‘fair use,’ and Maisel and his counsel firmly disagree," says Baio. "I settled for one reason: This was the least expensive option available."

The Settlement And Backlash

For a dispute where no complaint was ever filed in court, no outrageous allegations made in court and no dramatic revelations discovered in the course of the case, the settlement has garnered more than its fair share of attention. Few have honored Baio’s request for civility appearing at the beginning of his blog posting: "I understand you may have strong feelings about this issue, but please don’t harass [Maisel] publicly or privately. Reasonable discussion about the case is fine; personal attacks, name-calling and abuse are not. We’re all humans here. Be cool."

Baio’s request went unheeded by those who believe that copyright shouldn’t be an impediment to the "remix culture" that seeks to build on existing works. The attacks have ranged from the somewhat logical to outright offensive, with some even wrongly indicating that Maisel sued Baio (according to Baio, no suit was ever filed, and the matter was settled without a complaint being filed in court).

One attack went as far as referring to Maisel as a "copyright troll," which, as far as I can tell, is the first time the term has been used to refer to a person who creates and licenses copyrightable material, and seeks to enforce his or her copyrights. Although relatively new to the vernacular, the term has more generally been used to describe an entity that doesn’t produce or license copyrightable material, and which aggressively or opportunis-tically pursues litigation for copyright infringement in an effort to extort settlements from alleged infringers. The term is believed to have derived from the pejorative term "patent troll," which refers to entities that make no products, but hold one or more patents, and enforce the patents against companies that do make products.

The term "copyright troll" is entirely inappropriate when applied to photographers who seek to protect their livelihood through the enforcement of their own copyrights. It’s no more unreasonable for a photographer to seek compensation when one of his or her images is used for commercial purposes without authorization than it is for any other business owner to tak
e steps to protect the investment made in that business. Likewise, the measure of financial success achieved isn’t relevant to the question of whether a photographer is justified in seeking fair compensation for the use of his or her work. Indeed, one wonders what action would be taken if the songs on the album Kind of Bloop were distributed without authorization over the Internet, and whether enforcement efforts would face the same criticism as bloggers have meted out to Maisel.

The difficulty drawing the line between fair use and infringement, coupled with the perception that the threat of legal action is stifling creativity, has undoubtedly played a role in the criticism. "Anyone can file a lawsuit, and the costs of defending yourself against a claim are high, regardless of how strong your case is," lamented Baio in his blog. "Combined with vague standards, the result is a chilling effect for every independent artist hoping to build upon or reference copyrighted works." The Gizmodo article went as far as suggesting that the concept of fair use is rendered meaningless by the tremendous cost associated with the average copyright infringement suit, even linking to figures from an American Intellectual Property Law Association’s (AIPLA) survey of the costs associated with different types of intellectual-property law-related lawsuits. If, as the article contends, the average copyright case costs $310,000 to litigate when there’s less than $1 million at risk, then the implication is that the concept of fair use has been rendered meaningless.

The Devil Is In The Details

While I don’t doubt the findings from the AIPLA’s survey (disclaimer: I’m a member of the editorial board for the AIPLA’s Quarterly Journal) regarding the average costs for copyright infringement actions, it simply strains credibility to suggest that the cost renders the concept of fair use meaningless.

As for the AIPLA’s survey results, the devil is in the details. The figure quoted in the Gizmodo article is the median litigation cost through trial, including all costs, travel expenses, court reporter’s expenses, expert witness costs, etc. Each case is unique, and some may be more expensive than others. However, the total cost through trial is hardly a legitimate measure, considering that the distinct majority of cases never go to trial. The median cost of the case through the end of discovery is roughly half the total figure, and odds are good that the parties in the litigation will have a good idea if sufficient evidence exists to support a fair use defense long before the end of discovery.

Putting aside the significant costs of litigation, the real fallacy behind an argument predicated on the significant cost of litigation is that both parties—the copyright owner and potential infringer—face those sorts of costs. Thus, each takes a significant risk when permitting a case to proceed into litigation. The copyright owner takes a risk that he or she will be able to recover a large enough damages-and-attorney’s-fees award so as to justify the cost of enforcing copyrights and ending an instance of infringement. (The copyright owner might be able to avoid some of this risk by finding an attorney willing to handle the case on a contingency fee basis; however, all this arrangement does is shift the risk from the copyright owner alone to the copyright owner and his or her attorney.) Similarly, the potential infringer takes a risk that he or she will be able to prove that there was no infringement, and that the court will award sufficient attorney’s fees to compensate the potential infringer for the defense costs. The U.S. Copyright Act gives the court discretion to award reasonable attorney’s fees to the prevailing party, which could be the copyright owner or the accused infringer. Thus, both parties take a significant risk—one that may easily exceed the amounts likely to be awarded for the infringement itself—by allowing a case to proceed.

If anything, the significant cost associated with litigation, when coupled with a claim that a particular use is a "fair use" under the Copyright Act, may have more of a chilling effect on copyright owners who may deem the cost of litigation an unwise business investment.

Lessons To Be Learned

If there’s a lesson to be learned from the dispute and settlement, it is to always obtain clearances in advance. Even if you believe a certain use will qualify as a "fair use," you still have to weigh the risk of possible litigation. It doesn’t help that "fair use" is one of the more difficult concepts in U.S. Copyright Law, or that, as Baio observes, "[t]here are a lot of myths and misconceptions about ‘fair use’ on the Internet. Everyone thinks they know what fair use is, but not even attorneys, judges and juries can agree on a clear definition." Given the complexity of the issue, Baio might have been able to avoid some of these misconceptions, or at least gain a better understanding of the risks, by seeking the advice of a lawyer who understands fair use prior to engaging in potentially infringing conduct.

Since Baio believes that both the music and artwork are sufficiently transformative to qualify as fair use, his licensing of the music, but not the image, might seem incongruous. "But with the current state of music licensing, I never needed to take that gamble [that the use of the music would be fair use]," writes Baio. Under U.S. Copyright Law, a musician can record a cover of a copyrighted song, pro-vided notice is given and provided the musician pays for a compulsory license. This compulsory licensing scheme permitted Baio to pay a relatively small fee for a license rather than taking a risk that the record company might sue for infringement. However, the compulsory licensing scheme doesn’t apply to works of visual art, including photographs.

Contrary to the oft-repeated phrase, "It’s easier to ask for forgiveness than for permission," Baio was able to avoid claims of infringement from the record company by licensing the music. Had Baio attempted to obtain a license from Maisel, he might have been able to avoid a claim of infringement and then paying to settle the claim. Even if Maisel refused to license the image, that information would have permitted Baio to make an informed decision when weighing the risks associated with creating a pixelated version of Maisel’s image.

As is often the case, there’s another lesson here, which although less obvious, is nonetheless significant. The reality is that the majority of copyright infringement disputes and cases settle, as did Maisel’s dispute with Baio. Claims may be settled prior to litigation, or early in discovery after the parties are able to assess the relative strengths and weaknesses of their case, or at mediation, or even on the eve of trial. Whether claims settle early, or after each side has invested substantial resources in the case, is ultimately up to the parties. By settling prior to litigation, Maisel was able to stop Baio’s use of one of his images and cover his legal expenses. And that’s kind of cool.

Samuel Lewis is a Board Certified Intellectual Property law specialist and partner at Feldman Gale, P.A. in Miami, Fla., and a professional photographer who has covered sporting events for more than 25 years. He can be reached at [email protected] or [email protected].

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