Left: Patrick Cariou, Photo from Yes Rasta, p. 118; Right: Richard Prince, Graduation

The story of the case is relatively straight forward.  In 2000, Patrick Cariou published a book titled Yes Rasta of classical portraits and landscape photographs of Rastafarians that he took over the course of six years while living in Jamaica.  Despite its limited print run, well-known appropriation artist Richard Prince happened across a copy in a bookstore on St. Barth’s in 2005 and incorporated several of Cariou’s Yes Rasta photos into a series of paintings and collages, called Canal Zone, that he exhibited first in at the Eden Rock hotel in Saint Barth’s and later at New York’s Gagosian Gallery.  Canal Zone was well received and achieved considerable commercial success.

Cariou sued for copyright infringement in 2008 in New York where the district court rejected Prince’s fair use defense and granted summary judgment to Cariou, ordering the defendant to “deliver up for impounding, destruction, or other disposition, as [Cariou] determines, all infringing copies of the [infringing works].” The district court’s rejection of the fair use defense was based on the erroneous understanding that fair use required that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works – a requirement that Prince admitted his work did not meet.

In reversing the lower court, the Second Circuit observed that although many types of fair use (such as satire and parody) do comment on the original or on popular culture, the law does not require it and that to qualify as a fair use a new work generally need only alter the original with “new expression, meaning, or message.”

The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.

Continuing, the appellate court considered “Prince’s crude and jarring works” in contrast with Cariou’s “serene and deliberately composed portraits and landscape photographs,” finding Prince’s composition, presentation, scale, color palette, and media to be fundamentally different and new compared to the photographs. Thus, of the thirty works at issue, the Second Circuit had no trouble finding twenty-five sufficiently transformative so as to qualify for the fair use defense. The remaining five works “present[ed] a closer question[]” in as much as they did not sufficiently differ from the Cariou’s photographs so as to be transformative in nature as a matter of law. These five works were remanded to the district court for further determination as to fair use. Interestingly, the district court’s ultimate determination of these five works in light of the Second Circuits comments on each work will provide an interesting insight for future cases into where and how the line between infringement and transformative fair use is drawn.

Old §102 was divided into subsection (a)-(g ) while the “new” §102 has subsections (a)-(d) with additional sub-delineations as needed.  New subsection (a)(1) roughly corresponds to old subsections (a) and (b) combined, as seen in the below chart. Note that under old §102, subsection (a) applied only to acts or publications by third parties (i.e., knowledge or use “by others”) and not to the inventor himself or herself. Old subsection (b) applied to everyone, the inventor included, but consequently was somewhat redundant as to third party prior art.  New § 102 (a)(1) simplifies the analysis by eliminating the disparate treatment of acts or publications by the inventor and third parties and is consequently based on the language of old §102(b) which had no distinction. 

A comparison of the language identifies some of the changes.  First, the key date against which potential prior art is considered is now the effective filing date of the application in question as opposed to the date of invention. The date of invention – that is, when the invention was conceived and reduced to practice – is now largely irrelevant.

Second, all geographic limitations to prior art have been eliminated.  Whereas public use or sale outside of the U.S. were previously excluded as prior art, such activity is now considered a prior art disclosure no matter where it takes place.

But, “secret commercialization” – that is, use or sale of an invention that is not known to the public – no longer appear to qualify as prior under the new § 102. Under old §102, sale of an invention or even a product made by an inventive process more than a year prior to the application date was considered disqualifying prior art even if sold or used in secret. The same was true for any “public” use, even if nothing was disclosed to the public in the course of the use.  The USPTO has indicated that it reads the new § 102 to require sales or use to be a public disclosure in order to be disqualifying prior art.  I say this “appears” to be the case because despite the USPTO’s statement to that effect, there is still the possibility that the courts will reach a different conclusion by which the USPTO will be bound.

So, prior art under new §102(a)(1) includes, in a nutshell, any publications by anyone, anywhere before the filing date of the subject application and any public use, sale, offer for sale by anyone anywhere before the filing date of the subject application. But there, as always, are exceptions. Has the one year “grace period” to patentability under old §102(b) been eliminated altogether? Not entirely. But that will have to the subject of my next post.

So how does the Kirtsaeng decision change this? Some background first: Wiley, is of course a publisher of global reach and a more than 200 year history which includes the works of Baltimore favorite Edgar Allan Poe but which more recently focuses on academic, technical and professional publishing including many textbooks.  Wiley publishes considerably less expensive but very similar editions of its textbooks in overseas markets.

Supap Kirtsaeng is a Thai citizen who came the U.S. as a student and who found himself in a Ph.D. program at USC after graduating from Cornell.  Kirtsaeng also found that his family could buy foreign additions of the books he needed back home and mail them to him for much less than he could buy them in the U.S.  It didn’t take a degree from Cornell to figure out that he cold make a lot of money buying lawfully published but cheaper foreign textbooks and reselling them here for a profit, which he did to the tune of close to a million dollars.

Wiley sued asserting that importing and selling foreign editions of its copyrighted works violated its right to control distribution of the works. Remember, Kirtsaeng didn’t actually make any copies of the books he was selling, he only purchased lawfully made copies and resold (i.e., distributed) them. In his defense, Kirtsang asserted the first-sale doctrine which provides that once a copyrighted work is lawfully sold, the copyright owner’s interest in the physical object in which the work is embodied is exhausted and the now owner can dispose of it as he sees fit – including reselling it.

The District Court – affirmed by the Second Circuit – held that Kirtsaeng could not assert this defense because the doctrine did not apply to goods manufactured abroad and the jury found Kirtsaeng liable for copyright infringement. The Supreme Court reversed, however, finding that the first-sale doctrine applies to copies of a copyrighted work wherever made.

So what does this mean? In the narrow context of textbooks and content, I would expect a continued and perhaps accelerating transition towards electronic textbooks that are leased or licensed rather than purchased outright. Electronic textbooks can simply disappear when the semester ends with no secondary market for the publisher to worry about. This solution will not work for packaging and training materials so that global manufacturers have lost one tool in the IP arsenal that allowed them to create artificial divisions in the marketplace. A win in many books for American consumers.

“really a testament” to how successful the previous bill, the Maryland Film Production Employment Act of 2011, has been.” How successful is that? “It’s worked so well that it tapped out,” said Johnson, “and we had to borrow some funding from future years to keep ‘VEEP’ and ‘House of Cards’ shooting here this year.”

Not everyone is a fan. The Sun reports that some legislators like Baltimore County Del. Kathy Szeliga felt that SB 183 called on Maryland taxpayers to help “Hollywood fat cats.” Senator Kassmeyer, however, estimates that 5000 jobs were created by the 2011 tax credit program. Under the Maryland program eligible filmmakers “get a tax credit, which is based on a percentage of the company’s qualified in-state spend. Those expenditures are then audited by the state, and the credit is granted on the production company’s next corporate tax return.”

In Kirtsaeng, a student realized that he could purchase his US textbooks in foreign countries for less money. So he bought and sold imported but authentic textbooks. The publisher John Wiley & Sons sued the student book seller, who defended by claiming sales were permitted by the doctrine of “first sale.”  The 2nd Circuit Court of Appeals ruled in 2011 against the student book seller, holding that the first sale doctrine applied only to materials produced in the US. The student book seller appealed this decision in the US Supreme Court.

An earlier Supreme Court case Quality King v.  L’anza Research, sought to end the line of protectionist “gray market cases“  that protected US copyright owners from competition from cheaper but authentic (non-counterfeit) goods imported from foreign markets. A decision in the 9th Circuit, Costco v. Omega (affrmed by SCOTUS), found that the doctrine of first sale is unavailable as a defense to infringement claims on unauthorized sales of authenticate imported watches bearing a copyrighted design in the US unless the copyright owner previously sold or authorized sales of gray market watches in the US.

• Endorsements must be truthful and not misleading;
• If the advertiser doesn’t have proof that the endorser’s experience represents what consumers will achieve by using the product, the ad must clearly and conspicuously disclose the generally expected results in the depicted circumstances; and
• If there’s a connection between the endorser and the marketer of the product that would affect how people evaluate the endorsement, it should be disclosed.

The FTC has a helpful guide with tips on how to comply, including using “#Ad or #Sponsored in a tweet or post to avoid consumer confusion.

The Supreme Court held that abstract advocacy of lawlessness is protected speech under the First Amendment in the seminal case of Brandenburg v. Ohio, 395 U.S. 444, 89 S.Ct. 1827, 23 L.Ed.2d 430 (1969). In Rice v. Paladin Enterprises, Inc., 128 F. 3d 233 (4th Cir. 1997), a Maryland court held that the First Amendment does not pose a bar to a finding that Paladin, the publisher of Hitman, A Technical Manual for Independent Contractors, was civilly liable as an aider and abettor of a triple contract murder performed according to the instructions in the Manual. Long-established case law provides that speech — even speech by the press — that constitutes criminal aiding and abetting does not enjoy the protection of the First Amendment where the defendant has the specific purpose of assisting and encouraging commission of such conduct and the alleged assistance and encouragement takes a form other than abstract advocacy.

Role-playing usually falls into the category of “abstract advocacy” but it seems in the present case that the abstraction of fantasy took a darker turn when real life people  were targeted. If a real life victim discussed on Darkfetish.net was injured based on the role playing discussions would the publisher of be liable as was Paladin in the Hitman case?

Regarding content posted online as public is best– no matter what the privacy policy says.  Social media and other interactive businesses struggle  to keep their policies (and practices) current and reflective of how technology actually uses data to provide services online. Users who follow the steps in Kashmir Hill’s article and thinking before posting private content will have fewer social media privacy concerns.

A group of performance artists from Baltimore known as “FORCE: Upsetting Rape Culture” took advantage of a much anticipated media event to bring attention to the importance of consensual sex. The VS All Access Victoria’s Secret fashion show is an such an event, gluing billions of eyeballs to its prime time telecast.

For FORCE, the VS All Access television event was the perfect opportunity to launch its own fashion campaign, Pink Loves Consent, by spoofing Victoria’s Secret’s PINK brand. During the VS All Access event, FORCE launched a parody website and social media strategy that resulted in a giant wave of tweets about body acceptance and the importance of normalizing a culture of enthusiastic consent. FORCE’s social media campaign made #loveconsent the number one hashtag associated with #victoria’ssecret during the fashion show. Many people believed that it was Victoria’s Secret’s own social program.  “Nope, it was FORCE.” said the Pink Loves Consent press release.

Victoria’s Secret took down the Pink Loves Consent website via the DMCA notice process, alleging that the Pink Loves Consent website infringed VS copyrights and trademarks. Under copyright law, copyright owners must have a bona fide belief that the offending media is actually an infringement to qualify for take-down. Fair use of copyright protected materials is not an infringement under copyright law. A quick read of the Pink Loves Consent website or FORCE’s Tumblr page make it obvious that the VS PINK brand is being parodied in order to make a point about the importance of mutually consensual sex and advertising healthy body images in light of PINK’s  teenybopper-ish  underwear emblazoned with slogans like “Sexxy,” “Unwrap Me Now” and “Sure Thing”.

As we have seen before,  bona fide fair use of the PINK materials would have permitted FORCE to contest Victoria’s Secret’s DMCA notice in court but, taking a tip from Pirate Bay’s play book,  FORCE identified a more robust web hosting company, added a fair use disclaimer, and moved on to new spoofs, including Operation Panty Drop.

The message is spreading… Articles continue to appear in news media including Huffington Post, Daily Beast, Jexebel, The Examiner, Boing-Boing, Business Insider, Daily Mail, Hindustan Times,  The New York Daily News, The San Fransisco Bay Guardian, PolicyMic, Austin Chronicle and MarySue. The Ober|Kaler IP team was pleased to provide legal support to FORCE’s spoof through Maryland Volunteer Lawyers for the Arts.