No Monkey Business Will Be Permitted in the Court

Under the U.S. Copyright laws “Copyright protection subsists … in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”  Copyright protection includes works of authorship in pictorial form, including photographs.

With this background I’d like to report on a case filed in the U.S. District Court for the Northern District of California in September 2015.  As alleged in the Complaint, sometime in 2011, a photographer by the name of David Slater briefly left his camera unattended and a 6 year old named Naruto, using Mr. Slater’s camera, took a number of selfies without any assistance from Mr. Slater.  Mr. Slater located the selfies that were taken by Naruto on his camera and, he, along with the co-defendant, Blurb, Inc., published and widely distributed the selfies online beginning in 2014, all without the authorization of Naruto.  Naruto filed the complaint against Slater and Blurb, Inc. and alleged that Slater and Blurb, Inc. infringed his rights of copyright by reason of the unauthorized distribution of Naruto’s selfies.
 
On first blush, this sounds like a fairly clearcut case of copyright infringement.  The selfies purportedly were original works of Naruto which were reproduced and widely distributed by Mr. Slater and Blurb, Inc. without Naruto’s permission. So why should these set of facts be of particular interest?  What if Naruto was a crested macaque monkey that snapped the selfies?  This was the novel question that faced the District Court in the action Naruto v. David John Slater and Blurb, Inc. The case was filed through Naruto’s “Next Friends,” People for the Ethical Treatment of Animals, Inc. (PETA) and Dr. Antje Engelhardt, a professor of behavioral ecology and anthropology.

Slater and Blurb, Inc., filed a Motion to Dismiss based on several legal theories.  First, the defendants asserted that Naruto lacked standing to pursue the claim through the courts because Naruto was a monkey.  Though PETA and Dr. Engelhardt, as Naruto’s “Next Friends,” stated that their intent was to use the proceeds from the commercialization of the selfies for habitat preservation and for the benefit of Naruto’s brethren, the defendants asserted that all of these activities would be pursued without Naruto’s consent since Naruto was not capable of providing consent.  Furthermore, the Defendants asserted that the phrase “works of authorship” in the copyright laws, relate to works by humans, not animals.

Sadly for Naruto, on January 6, 2016 the District Court, in a tentative opinion, held that the U.S. Copyright Act extends to humans, not animals, thereby dashing any hopes Naruto and his brethren might have harbored for the betterment of the primate community.  One can only imagine what the deposition of Naruto would have been like had the case continued. The moral of this story should the decision become final – there will be no monkey business in the district courts, at least with respect to claims of copyright infringement.  It remains to be seen whether Naruto will appeal the District Court’s decision.

False Marking Alert: Could International Product Sales, Shipments, Or Manufacturing Land You In Prison?

Do you manufacture, ship, or sell products abroad that contain the ® trademark registration symbol on the products, labels, or packaging?  If so, did you know that you may face criminal liability, imprisonment, fines, seizure of your products, injunctions, unfair competition claims, damages, and other liability if you failed to register your trademark in the foreign countries where you manufacture, ship, or sell the products?

“False marking” occurs when an unregistered trademark is represented as a registered trademark.  Internationally, the ® symbol is generally perceived to denote an existing trademark registration.  In some countries, it is a crime to falsely indicate that a trademark (or portion of a mark) is registered, or that goods or services are protected by a registered trademark or service mark, when they are not.  Examples of countries that impose criminal liability for false marking include, without limitation: Japan, Korea, Germany, India, and Brunei.  False marking under the laws of Japan, for instance, may result in imprisonment for up to three years.

In addition to potential criminal liability exposure, false marking may also result in severe civil penalties.  These penalties may far outweigh any perceived cost savings associated with a foreign manufacturer or cheaper overseas labor.  For example, China may impose a false marking fine of up to 20% of business volume or double the amount of profit earned, even if products are manufactured in China solely for export.  Chinese courts have imposed false marking fines, product seizures, injunctions, and damages against companies that manufacture goods in China for export, even though they were not selling the goods in China.

Before manufacturing, shipping, or selling products abroad, consult with an experienced trademark attorney about international trademark requirements.  Trademark laws and marking requirements vary from country to country.

If you have already manufactured, shipped, or sold products bearing the ® trademark registration symbol in any countries where the trademark is not registered, immediately consult with an experienced trademark attorney to discuss whether you may face criminal and civil liability exposure, and international trademark options and strategy to mitigate future risk.

Protect Your Artwork: Understanding the Visual Artists Rights Act

The Visual Artists Rights Act (VARA) is part of the U.S. Copyright Law and is found at 17 U.S.C. §106(A). This law went into effect in 1990 and grants certain rights to visual artists. It is akin to moral rights laws which have been in existence for many more years in European countries.

 

Works of art meeting applicable requirements provide the artist with certain rights in their works which are in addition to rights available to all authors under the Copyright Law. These rights are personal to the visual artist and exist irrespective of ownership in the work itself and ownership of copyright rights in the work.

 

Under VARA, a visual artist (called an author of visual art in the statute) has the right:

• to claim authorship of the work;
• to prevent use of the author's name on any visual art which the author did not create;
• to prevent any intentional distortion, mutilation or modification of the work which would be prejudicial to the author's honor or reputation.

In addition, an author of a work having a "recognized stature" has the right to prevent intentional or grossly negligent destruction of a work.

 

These artist's rights are subject to Fair Use exceptions and certain exceptions for works incorporated into or made part of a building. In addition, modification of a visual work of art which is a result of the passage of time or the inherent nature of the materials is not a violation of the artist's VARA rights, nor are modifications which are the result of conservation or public presentation, including lighting and placement, unless caused by gross negligence. 

  

The law is applicable to a "work of visual art" as defined in section 101 of the Copyright Law (17 USC§101) which specifies paintings, drawings, prints or sculptures, or still photographic images which exist in a single copy or a limited edition of 200 copies or less signed and consecutively numbered by the author. For sculptures, the limited edition is 200 or less multiple cast, carved or fabricated copies consecutively numbered by the author and bearing the signature or other identifying mark of the author. Aesthetic taste or value are not requirements for protection under the VARA Act.

 

Purchasers of visual works covered by the statute must obtain written waivers from the author if they wish to exercise any of the exclusive artist's rights enumerated under the VARA law. Absent such a waiver, the artist can effectively veto decisions about the work. This has been a contentious issue particularly with respect to public sculptures, site-specific art and commissioned works. Litigation has arisen from assertions of artist's rights violation occasioned by movement of a sculpture from a public park, removal of murals from a building lobby, removal of graffiti from a building wall, and destruction or modification of a public art installation.

 

The VARA rights extend for the lifetime of the author for works created after the effective date of the law (Dec. 1, 1990). For joint authors, the term is for the life of the last surviving author. For works created before the effective date of the law, the rights are coextensive with the usual copyright term.

 

The rights provided under the VARA law do not apply to any reproduction, depiction, portrayal or other use of a work in, upon or in connection with any item that is a work made for hire or any one of the items enumerated in footnote [1].

 

The rights of the author may not be transferred, but those rights may be waived so long as the waiver is in a written instrument signed by the author. If there is a joint work of visual art prepared by two or more authors, a waiver of rights made by one author waives the rights for all the authors.

 

An important aspect of this law is that ownership of the VARA rights is distinct from ownership of any copy of the work or ownership of a copyright or any exclusive right under copyright in that work. Transfer of ownership of any copy of the work of visual art or of a copyright or any exclusive right under a copyright does not constitute a waiver of the VARA rights. A waiver of rights by the author with respect to a work of visual art does not constitute a transfer of ownership of any copy of the work or of ownership of any right of copyright.

 

The Golden Rule with respect to dealing with a work of visual art is to have a written agreement signed by the artist and purchaser which spells out the rights of ownership and copyright acquired by the purchaser, any waivers under VARA and any rights retained by the artist.

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[1] 17 USC§101 A work of visual art does not include -
 A. (i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication;
 (ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container;
 (iii) any portion or part of any item described in clause (i) or (ii).