As a copyright attorney, a guilty pleasure of mine is watching YouTube debates on fair use. Seeing these debates is nothing short of inspiring because they prove an important point: anyone – not just attorneys – can understand and debate the law (as it should be). Since YouTube has become one of the primary laboratories of fair use, it is important to facilitate that debate with accurate legal information relevant to YouTubers. Of critical importance is clarifying the legacy of the (in)famous case: Equals Three v. Jukin Media.

Many people, understandably, believe Equal Three set a bad precedent for YouTubers because it went to a jury. But jury verdicts have absolutely no precedential value. And the opinion that resulted from Jukin’s motion for summary judgment was the first to recognize certain types of reaction videos as not just transformative, but highly transformative.

So what happened? Why all this confusion? And what does this opinion say? The answers require a little bit of an explanation, but given its importance to the community, I hope you bear with me.

Some Background

For those unfamiliar, Ray William Johnson was a famous YouTuber who created the YouTube show Equals Three. Almost all Equals Three episodes involved discussing online videos. In 18 of these episodes, Equals Three used 19 videos owned by Jukin without permission (one Equals Three episode used two videos owned by Jukin). Equals Three was receiving numerous DMCA takedown notices from Jukin. In order to stop Jukin from issuing these takedown notices, Equals Three decided to file a lawsuit.

At an early stage, Jukin filed a motion for partial summary judgment that Equals Three’s use of the videos was not fair use (I’ll explain what a motion for summary judgment is after discussing the opinion). The court in Equals Three denied Jukin’s motion for summary judgment as to all Equals’ Three episodes, except one episode called “Sheep To Balls” (no giggling).

So What Did The Court Say?

As many know, fair use is a context-sensitive inquiry that requires analyzing, weighing and balancing the four fair use factors together. Those factors are: (1) the purpose and character of the use, including its commercial nature; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used of the original; and (4) market harm. While certain factors, like the first fair use factor (i.e., the transformative use inquiry) have greater weight and affect the analysis of the other fair use factors, no single factor decides the fair use inquiry.

First Factor (Transformative Use): The court in Equals Three found each episode, except for “Sheep To Balls,” to be highly transformative. Here’s how the court explained why Equals Three’s use was highly transformative:

Equals Three’s episodes directly respond to and highlight humorous aspects of Jukin’s videos. The episodes do so via the host’s reactions to the videos, jokes, narration, costumes and graphics. The host’s narration does not simply recount what is shown in Jukin’s videos; instead the host makes comments about Jukin’s videos that highlight their ridiculousness by creating fictionalized narratives of how the events transpired, using similes, or by directly mocking the depicted events and people. … This is not a case where the addition of minimal narration, an introduction, or text did not change the essential character of the original work. … This is also not a case where Jukin’s videos are used “to get attention” or to “avoid the drudgery in working up something fresh.”

The court found that the “Sheep To Balls” episode was not transformative because Equals Three comments were “general” and “broad points that were not directly aimed at criticizing or commenting on the video.

A great deal of guidance can be gained from the Equals Three court’s analysis. If the host’s/reviewer’s comments are substantial and directly target the underlying work to criticize it – even by just making the original appear ridiculous – the use will likely be considered highly transformative. However, if the original work is used to make a point that does not target the original, is minimal and/or pretty much just used the original to get attention instead of creating something fresh that provides new insights and understandings, the use will not be considered transformative.

Second Factor (Nature of the Copyrighted Work): The second fair use factor examines whether the original work was creative or factual in nature and published or unpublished events (there was no dispute that Jukin’s videos were published for fair use purposes). Here, Jukin’s videos usually involved point and shoot videos of real (albeit absurd) events. Despite this fact, the court found them to be creative – which disfavors fair use. However, the court in Equals Three made it clear “the copied work’s creative nature is not particularly important where the new work is highly transformative.”

Third Factor (Amount and Substantiality Used): To begin, it is important to clarify this factor. The third fair use factor does not examine the amount used in isolation. Nor does it solely focus on whether the “heart” of the work was used in the new work. Rather, this factor examines the relationship between the transformative purpose and the amount and substantiality used of the original to achieve that purpose. If the amount and substantiality used is excessive in light of the purpose, this will cut against fair use. If the amount and substantiality used is reasonable in light of the purpose, this will favor fair use.

Even though Jukin argued that Equals Three took the “heart” of each video, the court found the amount used to be “reasonably necessary to convey enough of the events to allow the host’s jokes, comments, and criticisms to make sense to the viewer and resonate.”

This line should serve as a great mental guide for content creators on YouTube who engage in what they hope will be fair use. When using someone else’s copyrighted work for purposes of commentary or criticism, it is very wise to ask oneself “Do I need to use this part of the video in order for my comments to make sense?” (In my personal opinion, the amount used is not only a legal question but an artistic one as well. Videos that use excessive amounts of the original are, in my opinion, bad content because – at the very least – they demonstrate sloppy editing and pacing and – at worst –are horribly unoriginal).

Fourth Factor (Market Harm): The fourth fair use factor examines whether the use will result in a substantially adverse impact to the potential market for the original and its derivative works (a derivative work is where the original is used to create another work, like turning a book into a movie). When the use at issue involves criticism or commentary of the original, the potential for market harm shrinks dramatically because the law does not recognize a derivative market for critical works (Quinton Reviews said it best: the notion of asking for permission (let alone paying the copyright owner) to make a critical work “is a special kind of stupid not even worth considering as a realistic opinion.”).

Jukin argued numerous hypothetical market harms – each of which failed to demonstrate the existence of actual market harm.

First, Jukin argued that market harm to the original video because “Equals Three frequently copies its videos during the time when they are allegedly most valuable – shortly after their publication.” The court rejected this argument as mere speculation because Jukin failed to offer any evidence that this was the case as a general matter or for the videos in question (this is not to say it cannot be proven; rather Jukin failed to prove it). More importantly, the court attacked this form of market harm as a mirage because it “risks circular reasoning – if Equals Three’s use is fair then no license fee is required by it or by other similar users.”

Second, Jukin argued that it often licenses its videos for the exact same kind of uses as Equals Three. Again, the court rejected this argument because “there is no cognizable derivative market for criticism.”

Third, Jukin argued that viewers would watch Equals Three’s episodes instead of Jukin’s videos. But, the only evidence Jukin offered was blanket statement by Jukin’s director of licensing. The court rejected this argument as “fail[ing] to offer sufficient foundation to support this broad, unsubstantiated statement.”

Ultimately, because Equals Three could not substantiate its claim that its use increased views to the original, the court found that this “factor does not favor either party.”

Summary of Factors: Because fair use is a context-sensitive inquiry that requires analyzing all four fair use factors together, the court summarized its analysis as follows:

Here, Equals Three’s episodes (except Sheep to Balls) are highly transformative and use of Jukin’s videos [sic] only what is reasonably necessary to achieve their transformative purpose. The first and third factors thus strongly favor fair use. There is no proof of cognizable harm to any actual or potential market, and thus the fourth factor favors neither party. Moreover, though the second factor weighs against fair use, it is of little weight in light of Equals Three’s episodes transformativeness. Moreover, Jukin’s videos were published before Equals Three used them. Thus, on balance, the factors weigh in favor of fair use for all episodes except Sheep to Balls.

So why did it go to a jury and what happened?

In the case, Jukin filed a motion for partial summary judgment that Equals Three could not claim the fair use defense. A motion for summary judgment is when one side asks the court to decide the entire case or a certain issue in its favor because there is no dispute over the important facts and, given these facts, the law dictates judgment in that party’s favor.

This is was where the disaster happened. Equals Three did not move for summary judgment at all. Because Equals Three failed to move for summary judgment, the court did not evaluate whether the undisputed facts dictated judgment in favor of Equals Three, but only that Jukin was not entitled to summary judgment (as the court explained in an order on January 13, 2016 (Dkt. #77)). Consequently, all the episodes (except for “Sheep To Balls”) went to the jury. Had Equals Three moved for summary judgment, it is quite likely that the majority – if not all – of the remaining Equals Three episodes would have been declared fair use. If this had happened, this case may have never gone to a jury.

Unfortunately, I have no answers why Equals Three did not move for summary judgment and it would be unfair to toss out unsubstantiated speculation. But the reality is that the Equals Three opinion was the first to recognize transformative uses that were invented by YouTube content creators. As the YouTube community becomes more organized, sophisticated and effective at using the judicial process to gain legal recognition and protection, the Equals Three decision will be remembered as being the first brick in making legal recognition of new fair uses invented on YouTube as a reality.

 

Copyright: ratru / 123RF Stock Photo
Copyright: ratru / 123RF Stock Photo
Los Angeles City Attorney Mike Feuer filed criminal charges last month against five casting workshops, their owners and employees, alleging violations of the Krekorian Talent Scam Prevention Act. Under the Act, it is a crime to charge a performer money for the right to audition.

The workshops bill themselves as opportunities for performers to read in front of professional casting directors for the purpose of receiving notes and guidance on their auditioning skills. But Feuer expressed the City’s position in a press conference as follows: “As the entertainment capital of the world, Los Angeles continues to attract thousands of aspiring performers from across the world. Unfortunately, pay-to-play casting schemes often exploit their dreams, purely for profit. My office will continue to crack down on those who would take advantage of performers desperate for work.” The performer’s union SAG-AFTRA issued a statement strongly supporting Feuer’s action.

The charges followed a year-long investigation in which a professional actor working as an undercover informant attended 13 workshops conducted by the five defendant companies. Many of the defendants are well-known casting directors and associates who have worked on shows such as Santa Clarita Diet, Criminal Minds and The Big Bang Theory, among others.

A man convicted of bludgeoning his father to death with a fireman’s ax and mutilating his mother in 2004 might have the right to collect damages from A&E Lifetime Entertainment for using his name and likeness without permission in the 2013 docudrama “Romeo Killer: The Christopher Porco Story.”  In 2013, Porco attempted to block the film’s release and filed suit pro se against A&E for violating New York‘s right of publicity statute Civil Rights Law § 50, which prohibits the unauthorized use of a living person’s name, portrait or picture for advertising or trade purposes.  The trial court originally enjoined the film’s broadcast, an extreme sanction, which was ultimately reversed on appeal.  A&E then moved to dismiss the case for failure to state a claim and initially succeeded, but the appellate court reversed in a groundbreaking decision.

Copyright: dorian2013 / 123RF Stock Photo
Copyright: dorian2013 / 123RF Stock Photo

The court acknowledged New York’s newsworthiness exception to § 50 which insulates defendants from liability for using a person’s identity in connection with a newsworthy story or matter of public concern, but found A&E could still be liable for using Porco’s likeness in a fictional biography based on a true story.

Porco alleges the film is not a news story but rather a “knowing and substantially fictionalized account” about the events leading to his imprisonment.  In support of his claims, Porco offered a letter written by one of the film’s producers to Porco’s mother that indicated a non-fictional documentary of the case would accompany the film where she could voice her position.  Drawing every inference in favor of Porco, the plaintiff, the appellate court found this evidence sufficient to withstand a motion to dismiss.

Various media companies including HBO, NBCUniversal, First Look, Discovery, CBS and the New York Times rallied to Lifetime’s aid and filed amicus briefs.  They argued countless movies that are based on real individuals and facts (e.g. “Argo,” “Saving Private Ryan,” “Too Big to Fail,” “Roots,” “Schindler’s List”, etc.) would likely have never been made if the filmmakers were required to obtain consent or (worse) afford creative control to every person portrayed in the film.

In California, the creators of the 82nd Academy Award’s Best Picture “The Hurt Locker” defeated a right of publicity lawsuit over the use of Explosive Ordnance Disposal technician Jeffrey Sarver’s identity.  The district court granted the filmmakers’ anti-SLAPP motions to dismiss the suit and the Ninth Circuit affirmed holding “The Hurt Locker” is speech that is “fully protected by the First Amendment, which safeguards the storytellers and artists who take the raw materials of life – including the stories of real individuals, ordinary or extraordinary – and transform them into art.”

Although “The Hurt Locker” decision reinforces California’s protection of docudrama producers against right of publicity claims, Fox Rothschild partner David Aronoff remains cautious.  In an interview with The Wrap, Aronoff said “To a large extent, right of publicity claims arise from the desire of persons of public interest to control the context and manner in which they are depicted.   As a result, expansion of the right of publicity could certainly have a chilling effect on creative works, since persons of public interest often want to restrict the uses of their names, likenesses and personas to only whitewashed and sanitized versions of their conduct.”

Following up my colleague Lori Kozak’s blog post from almost one year ago, the Asian-American rock band known as “The Slants” had their day in the highest court of the land on January 18, 2017. The U.S. Supreme Court heard oral arguments from the band’s attorneys that the group’s name should not be barred from federal trademark registration on the basis that their name is offensive to people of Asian ethnicity.

While arguments over band names typically arise between band members, “The Slants” founder, Simon Tam is fighting Section 2(a) of the Lanham Act, which prohibits the registration of a trademark that may disparage persons, institutions, beliefs, or national symbols. Representing Tam, attorney John Connell argued that the band name contains both a commercial and expressive communication, and that Section 2(a) places an undue burden on the latter, which is outside the scope of Congress’ intent to reduce confusion in the marketplace.

On the other hand, Justice Department attorney Malcolm Stewart argued that by granting such trademarks federal protection, the government would in fact be distracting consumers from identifying goods and their sources, and this would actually hinder commerce.

Merchandising, live performances, and fan clubs for artists rely heavily on the strength of an artist’s branding. While the Court recognized that Congress is not preventing “The Slants” from using their name in commerce, the advantages of federal trademark protection have become a necessity for any successful musical act, whether on a major label or as an independent artist. Tam, along with the rest of us (including the Washington Redskins) will eagerly wait for the Court’s decision in this case, which is expected in June.

The TV manufacturer Vizio agreed to pay $2.2 million to settle a lawsuit brought by the Federal Trade Commission and the State of New Jersey over its data collection practices.

Smart TV
Copyright: scanrail / 123RF Stock Photo

The lawsuit alleged that the company’s internet-connected smart TVs were recording exactly what consumers were watching second by second. The sets were able to collect this data for shows from all sources, whether from cable or broadband service providers, set-top boxes, streaming devices, DVD players, or over-the-air broadcasts, amounting to 100 billion data points daily on millions of sets. Vizio then paired this information to customers’ IP addresses and sold it to data aggregators who in turn used the information to identify each individual consumer’s viewing habits, matched with detailed demographic information such as age, gender, income and education. The only information lacking were viewers’ actual names, but this was no impediment to companies eager to be able to feed highly targeted advertising to consumers.

In addition to the cash payment, Vizio agreed, without admitting liability, to stop unauthorized tracking, to prominently disclose its TV viewing collection practices, and to get consumers’ express consent before collecting and sharing viewing information. In addition, the company must delete most of the data it collected under the program.

What’s worth keeping in mind is that Vizio’s mistake wasn’t in collecting the data–that’s no different from what social media platforms and internet search companies do as their core business models. It was just not sufficiently transparent about its practices. With improved disclosure, it should be back to business as usual.

Conan O’Brien is not joking around.  The TBS comedian and late-night talk show host may have found the punchline to Alex Kaseberg’s copyright infringement claim against O’Brien alleging that O’Brien stole five jokes Kaseberg originally published on Twitter in 2015.  O’Brien filed for summary judgment on Friday and argues the jokes were created independently of Kaseberg’s tweets.  O’Brien attributes any similarity between his jokes and Kaseberg’s to their genesis in current events and common themes of life.

Copyright: buzzfuss / 123RF Stock Photo
Copyright: buzzfuss / 123RF Stock Photo

For instance, both O’Brien and Kaseberg joke that New England Patriots’ quarterback Tom Brady gave Seattle Seahawks coach Pete Carroll the new Chevy Colorado Brady promised to the MVP of Superbowl XLIX, in which the two teams battled.  The joke was a reference to Carroll’s controversial decision to pass with just one yard separating Seattle from the end zone and its second consecutive championship. The pass was picked off, and the Patriots went on to win the game.  (In reality, Brady gave the truck to cornerback Malcom Butler who made the decisive interception.)

O’Brien and Kasberg also share jeers that a hypothetical cul-de-sac named after Bruce Jenner should be renamed “cul-de-sacless” and a discovery that the Washington Monument is ten inches shorter than previously recorded resulted from “shrinkage” because of cold weather.  The other two allegedly infringing jokes tease commercial airline passengers for always fighting over the armrest and the Oakland Raiders for their perpetual futility.

O’Brien admits the jokes concern similar subject matter, but argues they are composed largely of unprotectable elements: ideas.  Thus, he claims the jokes are entitled to thin copyright protection and Kaseberg is required to show his jokes and O’Brien’s jokes are virtually identical.  Kaseberg has yet to submit an opposition, but alleges in his complaint the similarities between all five jokes are too striking to attribute solely to coincidence.

O’Brien finds this argument perplexing since Kasberg’s tweets received little to no likes or retweets on Twitter at the time of the alleged infringement and O’Brien’s team does not use social media in developing jokes, making it highly improbable that any show writer saw the jokes let alone copied them.  O’Brien also contends that two of the jokes were published on his show before Kaseberg tweeted them.  Overall, O’Brien views this as a grudge suit for his refusal to hire Kaseberg as one of the show’s writers.  O’Brien’s motion states the San Diego resident, who claims he wrote for The Tonight Show with Jay Leno for over 20 years, contacted members of O’Brien’s team to become a freelance contributor and was repeatedly rebuffed.  Four months later, Kaseberg filed suit.

The Court is expected to rule on O’Brien’s motion in April.

We reported previously on DreamWorks Animation’s payment of  $50 million to settle a class action antitrust suit. The class represented animators who claimed they were denied employment opportunities due to a “gentlemen’s agreement” among the studios not to poach each other’s employees. The other defendants in addition to DreamWorks–Blue Sky Studios, Sony Pictures Animation and Sony Pictures Imageworks–had also settled, leaving only Disney and its subsidiaries left in litigation.

Pending judicial approval, the Disney parties The Walt Disney Company, Pixar, Lucasfilm and Two Pic MC will pay an additional $100 million to settle the claims against them. This final payment will bring the lawsuit to a close at a hefty final price tag of nearly $170 million for the studios involved.

Just four days after the Actor Age Censorship Law (AB 1687) took effect on New Year’s Day, the controversial anti-age discrimination statute was forced to bear arms as IMDb, the world’s most popular entertainment database, took aim alleging the law infringes its right to free speech.  Since AB 1687 was passed last September, more than 2,300 subscribers have reportedly demanded IMDb to remove their ages.

Movie theater
Copyright: fergregory / 123RF Stock Photo

AB 1687 prohibits subscription-based online entertainment employment providers from posting actors’ ages.  Critics argue it targets IMDb and IMDb Pro as they are the only widely-known sites that permit subscribers to post resumes, headshots or other information for prospective employers with an express policy against removing accurate ages and birth dates.  Most competitor websites either do not permit actors to subscribe or already allow users to remove their ages.

On January 5, IMDb filed a motion for a preliminary injunction in the Northern District of California claiming a high likelihood its constitutional legal challenge will succeed on the merits and irreparable injury if the site were required to remove actors’ ages during the course of the case, which could span years.  IMDb’s chief contention is that the law is a content-based regulation of speech subject to strict scrutiny, a test only a handful of laws in the history of American jurisprudence have passed.  Conversely, if the publication of actors’ ages is categorized as commercial speech, it triggers a form of intermediate scrutiny.

In the seminal decision of Central Hudson, the U.S. Supreme Court defined commercial speech as “speech proposing a commercial transaction.”  Although many find it hard to construe posting an actor’s age as a commercial transaction as defined in Hudson, SAG-AFTRA Chief Operating Officer and General Counsel Duncan Crabtree-Ireland took a broader view of commercial speech in his interview with the Hollywood Reporter.  “IMDb Pro and IMDb.com are intimately entwined and interconnected” he said. “Both sites are commonly used by the casting community and both sites generate revenue for IMDb from a variety of sources, including the sales of subscriptions to the Pro service itself, as well as parent-company Amazon’s product line.”

Still, even if this speech is considered “commercial,” the Hudson Court found the regulation of truthful commercial speech is valid only if it directly advances a substantial state interest.  Opponents of the suit, including SAG-AFTRA, which has asked to join the case as a defendant, claim reducing age discrimination is a substantial state interest and the law’s narrow limitation to only subscription-based websites renders it sufficiently tailored.

IMDb disagrees and claims the law is under-inclusive in that it leaves numerous websites that do not sell subscriptions free to post actors’ ages for the industry to see and consider in making hiring decisions.  At the same time, IMDb argues the law is over-inclusive because it requires the site to remove the ages of all subscribers, even those who are not actors like directors, producers and casting agents who do not face a similar degree of age discrimination.

The preliminary injunction hearing is currently scheduled for February 16, 2017.

woman-girl-remote-watchingIt’s widely anticipated that the new Republican-controlled administration will seek to roll back the FCC’s net neutrality rules. These rules require Internet Service Providers (ISPs) to treat identically all content that travels over their pipes. For example, an ISP cannot throttle the download speed of content furnished by its competitors. In his farewell speech, outgoing FCC Chair Tom Wheeler expressed guarded optimism that net neutrality will survive, though perhaps only after litigation.

The Commission’s initial net neutrality rules were struck down in 2014. The FCC had historically classified ISPs as equivalent to cable television companies for regulatory purposes. The DC Circuit ruled that the FCC lacked statutory authority to impose carriage requirements on such a provider. In response, the FCC reclassified ISPs as common carriers comparable to telephone companies. This move was upheld by the DC Circuit in June, 2016.

The new Republican-controlled FCC could undo net neutrality, but only through a new formal rulemaking that would surely be hotly contested. Alternatively, Congress could amend the Communications Act to prohibit ISPs from being treated as common carriers. Whichever course is followed, Wheeler expects that any rollback of net neutrality would engender litigation before the same court that upheld net neutrality just six months ago.

FCC Chair Tom Wheeler has announced his resignation effective upon Donald Trump’s inauguration. The President-elect has not yet announced his choice to replace Wheeler, but it’s a safe bet that the new Republican majority on the Commission will encourage a more freewheeling regulatory climate.

This blog has followed closely Wheeler’s efforts to force cable operators to permit competition from third-party set-top box providers. Although the proposal nominally promotes free market competition, the two current Republican FCC commissioners have expressed their opposition to the proposal. There is good reason to expect that it will not survive in the new administration.