Camille Pissarro’s Rue Saint-Honoré, dans l’après-midi. Effet de pluie {Public Domain pre-1923}

The oil painting by renowned impressionist Camille Pissarro titled “Rue Saint-Honoré in the Afternoon, Effect of Rain” appears innocent enough.  The work depicts a boulevard in Paris during a dreamy drizzly afternoon in 1897.  But it is what appears behind the canvas that portrays a far darker portrait of human suffering and has set the stage for a titanic legal fight between the Jewish family that originally owned the painting and Spain’s Thyssen-Bornemisza Collection Foundation which acquired the painting decades after it was stolen.

The dispute stems from the descendants of Lilly Cassirer-Neubauer, who was forced to surrender the painting to German officers in 1939 to obtain a visa to flee the country and avoid being sent to an extermination camp.  The Cassirer family acquired the original painting in 1898.  Several decades after World War II, in 1976, the Baron Hans Heinrich Thyssen-Bornemisza of Switzerland purchased the work in New York from an American art collector.  In 1998, the Baron left his entire collection of art to Spain which created the Thyssen-Bornemisza Collection Foundation and built the Museo Nacional Thyssen-Bornemisza in Madrid to display it.

It was not until 1999 that Lilly’s grandson Claude Cassirer received a call from an acquaintance that the painting was on display at the museum.  After the Spanish government refused to return the work, the Cassirer family filed suit in the United States District Court for the Central District of California in 2005 and ultimately withstood Spain’s defenses of sovereign immunity and the statute of limitations.

Last week, after approximately 13 years of litigation, federal judge John F. Walker in downtown Los Angeles presided over a bench trial in which the parties argued whether the Baron and/or Foundation knew, or was willfully blind to the fact that, the painting was stolen.

According to the Cassirers, on the back of the work, a partial sticker from the Cassirer family art gallery is still visible and indicated that the painting had been in Berlin.  The family also claims there is evidence that other labels on the back of the painting that the Nazis may have attached had been torn off, and that records from the Baron’s archives indicate he falsified where he purchased the painting.

Conversely, the Foundation contends that, while in hindsight the labels could raise a red flag, the Foundation’s experts conclude there would have been no reason for the Baron or museum officials to be wary of the painting’s past or link it to the Cassirer family.  The Foundation also points to the fact that the painting has been on full display at the museum indicating the Foundation believed it had nothing to hide, and that Lilly’s acceptance of a $13,000 restitution award from the German government after the war extinguished any claim she or her heirs may have to the painting.

Though trial has concluded, Walker’s decision is not anticipated until next spring and will likely be appealed regardless of the outcome.

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The Supreme Court turned down the petition of TVEyes for reconsideration of the ruling of the Second Circuit that TVEyes infringed Fox News copyrights. TVEyes is a media monitoring service that records virtually all TV news broadcasts in a searchable database. Subscribers can search for content by keyword and download 10-minute clips from the broadcasts. TVEyes raised a fair use defense against Fox News’s copyright infringement action, citing the importance of its service to media analysis and criticism. It stressed Fox News’s “outsized relevance to national political debate” because of the evident influence of Fox commentary on opinions expressed by President Trump. Fox rebutted this argument by asserting that the case was about nothing more than unauthorized distribution of copyrighted content. The Circuit Court, in applying the four-factor fair use test, found that the economic harm to Fox’s ability to license its own content outweighed the purported benefits of the TVEyes service to public discourse.

 

The Supreme Court denied TVEyes’ cert petition without opinion. The case will go back to the trial court to determine the final scope of TVEyes’ injunction and damages.

Normally, efforts to halt arbitrations are dead on arrival if an arbitration agreement exists between the parties.  This is especially so when there is no dispute over the scope of the arbitration provision or the claims that are subject to arbitration.

restraining orderIn Shawn C. Carter p/k/a Jay-Z, et al. v. Ionix Brand Group, Inc., et al., (N.Y. Sup. Ct., New York County, Petition filed Nov. 18, 2018), Jay-Z accomplished the extraordinary, at least temporarily.  He convinced the Court to enter a temporary restraining order (“TRO”) halting arbitration before the American Arbitration Association (“AAA”) of contract claims asserted against him despite his not disputing that the claims were covered by an arbitration provision requiring AAA arbitration.  Jay-Z’s challenge to the arbitration is highly unusual.  He contends that the AAA’s procedures violate New York’s public policy against racial discrimination because the AAA did not – and could not – make available for possible selection even a single African-American arbitrator with the background and experience needed to preside over the arbitration.

Under the applicable AAA procedures, Jay-Z, Iconix and the AAA were each to submit four names from the AAA’s Large and Complex Cases roster of arbitrators for possible selection as the arbitrator of the dispute.  Thereafter, each of Jay-Z and Iconix were to strike four of the twelve selected names.  The single arbitrator for the dispute would then be selected from the remaining candidates.  Jay-Z complained that based upon his review of the more than 200 potential arbitrators in the New York area on the Large and Complex Cases roster, not one African-American arbitrator had the necessary qualifications to oversee the arbitration. As a result, Jay-Z refused to engage in the selection process until his concerns were addressed.  In response, the AAA stated that it would select his four arbitrators in order to form a list of 12 potential arbitrators who would then be subject to the strike-out procedure.   Thereafter, the AAA sent Jay-Z and Iconix a list of 12 potential arbitrators and set a deadline of November 30 for the parties to submit the names of the four they chose to strike.

Rather than engage in this process, Jay-Z went to court and sought to enjoin the process based on the lack of diversity in the “Large and Complex Cases” arbitrator roster.  In addition to his contention that no qualified African-American arbitrator was included in the roster, his application also relied on statements on the AAA’s website regarding diversity, including that the AAA roster of arbitrators “is composed of 24% women and minorities, and this figure is increasing.”  According to Jay-Z, the actual numbers are lower in commercial cases and the percentage of “minority” arbitrators is never broken out from the percentage of women and minority arbitrators.

In his Petition, Jay-Z contends that the AAA’s procedures and lack of qualified African-American arbitrators renders the agreement to arbitrate before the AAA void because it is in violation of New York’s public policy against racial discrimination, the equal protection clause in New York’s Constitution, New York State and New York City anti-discrimination laws and New York State’s Deceptive Practices Act (based upon the allegedly misleading assertions regarding diversity on the AAA’s website).

The parties are scheduled to return court on December 11th.  At that time, Jay-Z will seek to extend the injunction for a 90-day period to permit the parties to work with the AAA to add additional African-American arbitrators to the roster.  Notably, Jay-Z’s filings do not specify a process to expand the roster or the number of new diverse arbitrators he maintains are required to cure the alleged violations of law and public policy.  Further, his filing also requests a permanent stay of the arbitration if the parties and AAA are unable to cure the alleged violations in the 90-day period.

Whether Jay-Z will succeed in extending the injunction, and the implications for AAA arbitrations beyond the Iconix arbitration if he does, will be the subject of close scrutiny in the coming days.  Stay tuned!

The battle of the briefs continued as Fox News urged the Supreme Court to take a pass on a petition for certiorari from TVEyes in a copyright case that has drawn considerable attention. As regular readers will recall, TVEyes records virtually everything on TV into a fully searchable database that it sells to subscribers. Fox News sued for copyright infringement; TVEyes asserted a fair use defense, which was rejected by the Second Circuit. TVEyes is asking the Supreme Court to overturn that decision.

TVEyes based its defense on the contributions its service makes to free speech and media criticism. Easy access to broadcast content, it argued, is essential for critics, commentators and researchers to keep pace in a chaotic and polarized media environment. TVEyes also asserted that the Circuit Court gave too much weight to the alleged economic harm to Fox when it applied the notoriously slippery four-factor fair use test.

Fox challenged the basic premise of TVEyes’ argument. “The Second Circuit’s holding does not concern political dialogue, commentary, criticism, or the First Amendment,” it wrote. “Criticism of the media is alive and well, and is in no way dependent on TVEyes’ efforts to profit from copying and distributing the media’s copyrighted content.” According to Fox, the supposed social value of TVEyes’ service is no more than a smokescreen to persuade the Court to overturn a ruling that “does not implicate a split in the circuits, involve an important unsettled question of federal law, or otherwise raise a cert-worthy issue.”

The network also argued that the Second Circuit’s application of the fair use factors does not deserve review. That court’s “careful balancing of the four-factor fair use test was an inherently fact-bound exercise, and TVEyes’ narrow disagreement with the court’s finding as to one of those four factors does not begin to warrant this Court’s attention.”

The parties’ differences could not be more stark. Will the Supreme Court let the Second Circuit decision stand, or hear the case and create a fair use precedent the could be of great importance?

We report, you decide.

 

This post is authored by Fox Rothschild partner Christopher P. Beall:

The much ballyhooed case involving copyright and trademark claims against the producers of the Netflix television series The Chilling Adventures of Sabrina reportedly has ended, with news media reporting – based on a statement from counsel for the Satanic Temple (giving new meaning to the phrase “devil’s advocate”) – that the case has been resolved.

The television show’s attorneys confirmed the fact of the settlement, but disclosed no details.  News reports indicate that the confidential settlement will mean that “the unique elements of the Satanic Temple’s Baphomet statue will be acknowledged in the credits of episodes which have already been filmed.”  No information was provided as to whether the television show’s producers agreed to pay the Satanic Temple a license fee for use of the Baphomet image.

The underlying case, filed earlier this month in federal court in Manhattan by United Federation of Churches, an organization that operates under the name The Satanic Temple and advocates for religious liberty issues, had claimed infringement based on a statue used in certain episodes of the television series which was remarkably similar to the Satanic Temple’s Baphomet statue.  Because of the similarities between the parties’ statues, as well as the fact that the Satanic Temple had obtained copyright registrations for its own work, it was likely that this case was headed for costly litigation over difficult questions under the Fair Use Doctrine.  The fact that the case has settled means that the show’s producers can now focus on keeping Sabrina out of the clutches of warlocks, goblins, and other teen nemeses, rather than immersing themselves in the “transformative use” doctrine.

The rest of us will just have to wait for the next juicy fair use case to sink our teeth into.

 

–Christopher P. Beall

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Cody Lundin’s lawsuit against Discovery for allegedly defaming Lundin in its reality series “Dual Survival” was voted off the island earlier this month when a district court in Arizona granted Discovery’s motion for summary judgment.  Lundin’s claims arose from an episode titled “Journey’s End to a New Beginning” which depicted Lundin walking off the program after clashing with the show’s co-host Joe Teti.  Lundin alleged the episode advanced the “false narrative” of him “walking off the show in disgrace as a burned-out, irrational, incompetent and mentally ill has-been.”

In granting Discovery’s motion, District Judge Roslyn O. Silver noted that although “Dual Survival” is hardly a “reality program,” it did not misrepresent Lundin’s behavior.  Silver found “Lundin was happy to participate in the charade as long as he was portrayed in the manner he preferred.”  What charade you ask?  Silver cited several examples in the case record that reflect “Dual Survival” is far more scripted than “real.”  For instance, Silver wrote “Dual Survival” often portrayed the hosts as having little access to food and water.  In reality, Silver found the hosts enjoyed breakfast and dinner at resorts, hotels, and lodges, and also receive catered lunches on location.  In addition, Silver noted multiple scenes in which “wild” animals were placed on set to be “hunted” by Lundin and Teti.

But when it came to the episode’s portrayal of Lundin, Silver found the depictions were accurate or, at least, substantially true.  For example, Lundin objected to a scene in which he is shown angrily throwing objects at Teti.  Lundin claimed this scene was the “cornerstone piece of the false narrative” that made Lundin appear incompetent and mentally ill.  Yet, he admitted he was angry; just not with Teti.  Lundin was upset with a producer who allegedly instructed Lundin to throw the items in this fashion.  Silver found the scene accurately portrayed Lundin’s emotional outburst, and whether it was directed to a producer or Teti was immaterial.

Lundin also objected to scenes in which he cursed at Teti and that these statements were rearranged to fit into different points in the dialogue.  Silver, again, found this depiction of Lundin to be substantially true since Lundin actually uttered those words and was upset with Teti when the statements were played in the episode.

Moreover, some of the scenes to which Lundin objected were judged to be completely true.  For instance, Lundin is portrayed laughing at Teti as Teti struggles to kill a rattlesnake.  Teti’s on-screen statements that the snake is dangerous and that this is no laughing matter, Lundin argued, cast a false light on Lundin suggesting he is a “seriously mentally ill basket case” to find humor in such peril.  In reality, Lundin claims he was laughing at Teti’s incompetence and not at a situation in which someone could become seriously hurt, and that Discovery should have provided this context to the viewers.  Silver disagreed and found this depiction of Lundin to be factually accurate because he was truthfully shown laughing at Teti as he tried to kill the snake.

On a broader level, Silver found Lundin failed to demonstrate how any portion of the episode posed a serious threat to his reputation or, at a minimum, casted Lundin in a highly offensive light.  To the contrary, Silver determined the episode at several points displayed Lundin in a positive light, commending his mastery of the art of survival and calling Lundin’s departure a “big blow” to the program.

Lundin has until December 2, 2018 to file a notice of appeal.

This post is authored by Fox Rothschild partner Christopher P. Beall:

Sabrina Spellman, she of the twitchy, witchy Archie Horror comic world in the Netflix reboot The Chilling Adventures of Sabrina, released last month with two 10-episode seasons, already has her hands full, what with teen angst, lust, occult powers, and a coming of age quandary.

Now, though, she also has those hellhounds known as lawyers on her trail.

The case, United Federation of Churches v. Netflix, was filed last Thursday (11/9/2018) in Manhattan federal court, asserting claims of copyright infringement and trademark dilution, on the basis of the television show’s use of a Baphomet sculpture as part of the set of the Academy of Unseen Arts, a prep school for witches that Sabrina attends.

The sculpture in the show bears striking similarities with a sculpture created by the plaintiff, which operates under the name The Satanic Temple, when the Temple battled for equal rights for its monument in Oklahoma after a court fight involving a monument of the Ten Commandments.  When the Oklahoma Supreme Court held that the Ten Commandments display at the Oklahoma State Capitol was prohibited as an unconstitutional establishment of religion on public property, the Temple dropped its effort to install its Baphomet sculpture there.  It has, however, indicated it wishes to install one of its sculptures at a similar display in Arkansas.  The Temple’s Baphomet sculpture attracted worldwide attention when it was unveiled at ceremony in Detroit in 2015 (https://www.bbc.com/news/magazine-33682878).

In the new case, the copyright claim here presents important questions focused on the intersection of free speech and copyright rights.  The Baphomet figure is itself an occult image that dates back at least 160 years, and in that sense, the original source of both the Temple’s sculpture and the Sabrina set is in the public domain and free for anyone to use.  However, the Temple’s sculpture – and the Sabrina set – use a unique composition of two children, a white girl and a black boy, staring fawningly up at the godhead.  (The public domain version of Baphomet is also different in that it is a hermaphrodite with female breasts, whereas the version created by both the Temple and for the television show depicts a well-muscled male chest.)

Because it appears that at least significant parts of the television show’s version of the Baphomet figure imitate the Temple’s sculpture, and because the originality of the Temple’s sculpture has been confirmed, at least at a prima facie level, through a copyright registration obtained by the Temple, the resolution of this case likely will come down to the notoriously flexible standards of the Fair Use Doctrine.  In that regard, the court will have to wrestle with the conundrums of whether the television show’s depiction of Baphomet is a critique or commentary on the Temple or the Temple’s sculpture, whether the Sabrina version is transformative because of its setting in a fictional school for witchcraft, and whether this latest version harms the market value of the Temple’s sculpture.  Ironically, on that last factor of the fair use analysis, the Temple’s lawsuit itself may in fact undercut its own case because of the instant celebrity created for the Temple’s sculpture by virtue of the news coverage of the litigation.

The Temple also asserted trademark dilution claims. These do not appear to be viable for a variety of reasons including the fact that the Temple’s sculpture cannot be said to be “famous” nationally, or even in New York,

While Sabrina might have solved this challenge with one of her magic spells (or a production lawyer who pushed back on the clearance work for the show’s set design), the court here will now have to untangle a very interesting copyright riddle that goes to the core of just how much free expression is allowed when using copyrighted imagery.

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Small low-power AM radio stations across the country may be in for a big boost.  The Federal Communications Commission (FCC) proposed regulations last month to increase the power of more local stations while scaling back some of the interference protections currently enjoyed by the 57 Class A 50,000 watt stations which dominate the nation’s AM dial.

At present, small AM stations are obligated to limit their signal strength at certain times to avoid encroaching on Class A stations’ service.  This allows Class A stations to span thousands of miles across the country, especially at night.  But the FCC questions whether such protections are still relevant in the digital age as an increasing number of Americans who listen to the radio do so through the Internet or satellite radio.

According to a study conducted by the Pew Research Center, 44% of cellphone owners in the U.S. streamed radio stations through their phones while driving in 2018 as opposed to just 6% in 2010.  Further, the study revealed podcast listenership has increased dramatically over the last decade from 18% in 2008 to 44% in 2018.  With respect to satellite radio, over 33 million Americans currently subscribe to Sirius XM Radio according to a study conducted by Statistica.   However, the Pew study indicated 90% of Americans aged 12 and older listen to terrestrial AM or FM radio broadcasts in a given week, suggesting traditional radio remains alive and well.

Critics of the FCC’s proposal claim increased interference from small stations will significantly hamper the signals for the nation’s most popular broadcasts, causing AM listenership to drop.  Additionally, they contend that signal interference may reduce the effectiveness of Class A stations’ emergency broadcast systems, which depend on uninterrupted service.  Conversely, supporters of the new regulations say these concerns are overblown and the AM dial could benefit greatly by the increased viability of diverse and community-centered regional radio.

Public comments on the proposed regulations are due in December.  The FCC will then have thirty days to consider this feedback and issue a reply.

Shortly after the 2015 debut of the hit Fox Television show Empire, Clayton Tanksley sued the studio, distributor, producer and creators of Empire for copyright infringement and related claims in the United States District Court for the Eastern District of Pennsylvania.  Tanksley’s claims stem from an alleged 2008 meeting with Empire’s creator and producer, Lee Daniels during a film competition sponsored by the Greater Philadelphia Film Office called Philly Pitch.  (The Film Office also was sued by Tanksley.)  Following the event, Tanksley claims to have discussed with Daniels a three episode television series he created and copyrighted called Cream, which was about an African American record executive who runs his own hip-hop label.  He also claimed to have provided Daniels with a DVD and script for the Cream series.  Tanksley’s complaint alleged that Cream and Empire are “strikingly substantially similar” in many respects, including the main and supporting characters, scenes and the overall themes of both works.

Copyright law protects the expression of ideas but not the ideas themselves.  Thus, in order for a plaintiff to prevail in a copyright infringement action he must demonstrate substantial similarity in the protected expression between the two works and not merely the fact that they share similar ideas or themes.  In dramatic works such as Empire and Cream, scènes à faire or plot elements that flow predictably from a general idea are unprotected.  For example, in “a film about a college fraternity … parties, alcohol, co-eds, and wild behavior would all considered scènes à faire and not valid determinants of substantial similarity.”  Tanksley v. Daniels, et al., No. 17-2023, p. 16, — F.3d – (3d. Cir. 2018).

Under that standard, the defendants moved to dismiss the complaint, arguing primarily that the two works were not substantial similar in protected expression.  In deciding defendants’ motion, the court performed a side-by-side analysis of Empire and Cream to determine whether a lay-observer would believe that the copying was of protectable aspects of Tanksley’s series.  The trial court granted the motion to dismiss, finding that the two works contain “dramatically different expressions of plot, characters, theme, mood, setting, dialogue, total concept and overall feel.”  And while the general idea of the two series revolved around African American music moguls, that was not protectable under copyright law.

Tanksley appealed to the Third Circuit raising primarily two arguments:  (1) the question of substantial similarity is too fact-intensive to be resolved on a motion to dismiss; and (2) the trial court erred in finding no substantial similarity between Empire and Cream.  As to the first argument, the court determined that certain works, including dramatic works, may be evaluated in a side-by-side comparison at the motion to dismiss stage and dismissed if “no trier of fact could rationally determine the two works to be substantially similar.”  The appellate court rejected plaintiff’s argument that the trial court erred in rendering its decision without the benefit of witness testimony, documentary evidence or expert analysis holding this was irrelevant to the dispositive question of how the two works would appear to a layman viewing them side by side.

As to the second argument, the Third Circuit determined that the trial court properly concluded that there was no substantial similarity of protected expression between Empire and Cream.  As the court concluded, aside from superficial, general similarities between the two shows, they were not substantially similar as a matter of law.  “The shared premise of the shows – an African-American, male record executive – is unprotectable.  These characters fit squarely within the class of ‘prototypes’ to which copyright protection has never extended.”  Thus, the Third Circuit agreed with the trial court that as to the protectable expression of plot, characters, theme, mood, setting, dialogue, total concept, and overall feel, no reasonable jury could conclude that Empire and Cream were substantially similar.

In dueling motions for summary judgment over copyright infringement claims, The Warhol Foundation butts heads with a photographer whose photo was a source for Warhol’s “Prince Series.”

Lynn Goldsmith is a self-described “rock and roll photographer” who has been photographing music legends since the early 1970s. The photograph in question was from a 1981 shoot she did for Newsweek with the late pop star Prince. Goldsmith says she licensed the photo to Vanity Fair for a one-time use as an artist reference for an illustration, and that’s how the photograph ended up in the hands of Pop Art pioneer Andy Warhol. Warhol used the photo as the basis for one of his iconic celebrity portraits, producing 12 paintings, two drawings, and two unpublished prints (the “Prince Series”).

In April 2017, Warhol’s estate sued Goldsmith, asking the court for a declaration that the use of the photo in the Prince Series does not violate Goldsmith’s copyright because Warhol’s works were “entirely new creations.”  Goldsmith responded a few months later, filing a counterclaim for copyright infringement.

Now, the District Court for the Southern District of New York must decide whether Warhol’s use of the photograph infringes upon Goldsmith’s copyright.

The Warhol Foundation argues that the Prince Series doesn’t count as an infringing derivative work because it does not contain any of the protectable elements of Goldsmith’s photograph. “Warhol’s signature silk-screen technique (and, in some cases, freehand drawings) deliberately stripped away every protectable element of the underlying photograph… the result… is that the only commonality remaining between Warhol’s Prince Series and [Goldsmith’s] photograph is the rough outline of Prince’s face – which cannot be copyrighted as a matter of law.”

Furthermore, even if Warhol’s Prince Series does contain derivative works, The Warhol Foundation says that Warhol made fair use of Goldsmith’s photo by “transforming” not only the photograph itself, but also the message it conveys. Among other artistic choices, Warhol: “deliberately cropped Prince’s head so that it appears disembodied… stripped away the range of tones and texture… painted many of the works with multiple layers of bright and exotic acrylic paints; and superimposed a floating, freehand sketch of the outline of Prince’s head.” Warhol transformed the message as well, the Foundation argues, creating an image of Prince “as an icon, not a person,” to comment on the impact of “celebrity and contemporary conditions of life.” The Second Circuit, the Foundation points out, has recognized this very quality in Warhol’s art, noting that “[m]uch of Andy Warhol’s work, including work incorporating appropriated images … comments on consumer culture and explores the relationship between celebrity culture and advertising.” Cariou v. Prince

Finally, the Foundation argues that Warhol’s art market is distinct from Goldsmith’s. While Warhols go for hundreds of thousands of dollars at the finest art galleries and auction houses, Goldsmith typically sells her photographs for low single-digit thousands, primarily through galleries that focus on rock-and-roll photographs and memorabilia.

For her part, Goldsmith cautions that this case may have catastrophic consequences for photographers. She argues a holding that Warhol’s “superficial revisions” constitute transformative use would “give a free pass to appropriation artists and destroy derivative licensing markets for commercial photographers whose works are used without permission.”

It’s worth noting that, in a landmark decision where the California Supreme Court applied the copyright fair use “transformative use test” as the First Amendment test for protected speech in the right of publicity context, the Court specifically pointed to Andy Warhol’s celebrity portraits as a paragon of what should be deemed a transformative use of a celebrity’s image: “Through distortion and the careful manipulation of context, Warhol was able to convey a message that went beyond the commercial exploitation of celebrity images and became a form of ironic social comment on the dehumanization of celebrity itself.” Comedy III Productions, Inc. v. Saderup, Inc., et al. 

Goldsmith points out that things have changed since Warhol’s time: “In today’s digital world, anyone can easily modify a photograph on a computer to add high contrast, coloration and artifacts.” Warhol, she argues, “did little more than that.”

The Southern District of New York will decide if it agrees.

Charlie Nelson Keever is a law clerk in the firm’s Litigation Department, based in its Los Angeles office.