I will be participating on a panel in the Writer’s Track called “Laws and the Writer.” It is at 7:00 PM. That should give you a couple of hours to get to Atlanta, grab a badge, and fight through hordes of women wearing TARDIS dresses.
Monthly Archives: August 2013
You can now follow me on Twitter for interesting links as well as updates on new blog posts. Just look for @writerinlaw. Maybe if I knew Twitter better (i.e. at all) I could provide you with some sort of quicker way to to follow my stream o’ tweets.
I wanted to give a brief policy overview, both for and against, the application of the first sale doctrine to eBooks. In other words, the arguments for and against allowing the sale of “used” eBooks.
I’ll go into the actual legal arguments (theory, doctrine, what have you) in a later post. I know you’re going to be waiting on that one with bated breath. If you want a preview, go and read the ReDigi district court opinion.
Most writers I’ve run across have VERY STRONG opinions on this subject, and all in one direction. (“I say we take off and nuke used eBooks from orbit. It’s the only way to be sure.”)
So naturally, keeping my audience ever in mind, I’ll start with the other side.
The policy arguments for permitting the resale of eBooks:
- Consumer protection thing 1. Some believe that converting sales of books from physical objects to technologically limited files negatively effects the consumer. It shifts power to the publisher and may ultimately reduce the value of what the consumer gets for the money. Some variation on same price/less value or lower price/much less value. The value in that formulation could relate to the monetary value in terms of resale possibilities or the longterm value of possessing something that will not disappear if you lose a password or device.
- Consumer protection thing 2. The lack of a secondary market (i.e. used market) will eventually lead to inflated prices. The availability of used books at a cheaper price than new books acts to decrease prices of new books. Eliminating the used market would therefore, it is argued, lead to increased prices.
- Copyright expansion. From a historical perspective, whether you consider the last two decades or the last two centuries, copyright has expanded GREATLY. This is true in terms of both the scope of rights given to the holders of copyrights and of the duration of the rights. The balance created by the first sale doctrine is seen as a small limitation on expansive copyright rights, whether you view that balance as stemming from personal property rights or from an exhaustion doctrine. (Okay, okay, I’ll save the theory for later. Hey, I’m a law professor – what do you expect?)
The policy arguments against permitting the resale of eBooks:
- Lack of degradation. Physical books break down. Their covers get bent, their spines are broken, . . . they get ratty or even fall apart. eBooks do not break down. A “used” eBook is identical in quality to a “new” eBook. With physical books, a purchaser of a new book would get something different than the purchaser of a used book, just as the purchaser of a new car gets something different than the purchaser of a used car. Mmmm, new book smell. Under this thinking, “used” eBooks would be much stronger competition for new sales. With physical books, there are reasons to buy new; not so, it is argued, with eBooks.
- Frictionless markets. Finding the used book you want can take more time than finding a new version. Maybe your local used bookstore doesn’t have the one you want. In other words, it may be easier to buy a new copy than to find a used version. (Amazon’s used book system for physical books may make this less true than it once was.) For eBooks however, because geography is taken out of the equation (the only “geography” remaining would be finding the correct website), it would be just as easy to find a “used” eBook as it would be to find a “new” eBook. Like the degradation problem, this would increase the competition new would face from used.
- Lack of resale being built into the price. I’ve heard many authors say that what they are giving the reader for the price paid is not something that can be resold. In other words, the lack of ability to recoup a portion of the original purchase price through the resale of the “used” eBook is already built into a lower original price.
- PIRACY. PIRACY. PIRACY. This is the dominant player for many in the ‘con’ camp. People just don’t believe users would not simply make a copy of an eBook and then sell the eBook in the used market. Most people arguing the “pro” side assume, for the sake of argument, that copy protection would be good enough to prevent this if we were to end up with a used market for eBooks. ReDigi claimed to monitor users’ computers to insure duplication did not result in their transfer of “used” mp3’s. As long as the belief that copying could happen on a rampant scale, this concern will dominate policy debates.
I’m not here today to declare a winner between these arguments, but I will offer two thoughts, that I will call “sideways.” That is, they come at the dispute not from a “pro” or “con” view, but from the “side.” Both of these stem from thinking about re-evaluating, in light of new technology, the incentive/public benefit calculus at the heart of copyright.
- We might consider a departure from monolithic copyright. Doesn’t that sound like an impressive term – “monolithic copyright”? (Professor, remember?) What I mean by that is that maybe what works for one type of art might not work for another type of art. So, we might do something different for music than we would do for books. Books are quite often read once and then not read again. (At least for most books with most readers – we don’t need to go into how many times I’ve read the Harry Potter series.) Music is different; most people don’t listen to a song and then never listen to it again. Music is experienced over and over again in typical usage. Because of this difference, a secondary (“used”) market for MP3’s may make more sense than a secondary market for eBooks.
- We could create a middle ground. We could permit the resale of eBooks, but legally mandate some sort of payment to the copyright holder. This would be a compulsory license akin to the mechanical license available for musical composition copyrights.
That’s a quick and (hopefully not too) dirty overview of the policy debates surrounding “used” eBooks. If you think I’ve left out any arguments for or against, I’d love to hear about them in the comments.
So what does Nathan Fillion have to do with hybrid publishing and conflicts between publishers and authors over unmet deadlines? Read on, browncoats.
I always find the portrayal of authors in popular media interesting, particularly the ways in which that portrayal is so far detached from reality. This departure usually takes the form of showing authors as either instantly successful or as so rich that money loses all meaning to them (or both). Bones is one example, although Dr. Brennan’s role as a rich author does not involve itself in the show that often. In one episode, her publisher buys her a new mercedes. You know – as a gift. Sure. Happens all the time.
Nathan Fillion’s character Richard Castle in the pseudoeponymous (epopseudonymous?) show Castle is another example. He throws money around without a thought, and he doesn’t seem to spend any time actually writing. I mean – supermodels, Italian sports cars, tons of free time – that’s been your experience with working as a writer too? Right?
But it’s not the money or lifestyle aspects of how Castle portrays authors that struck me while I was re-watching the pilot episode the other night (“Flowers for her Grave“). Instead, it was this dialogue exchange between Castle and his publisher/ex-wife:
Gina Griffin: What kind of idiot kills off his best-selling main character?
Richard Castle: Are you asking as my blood-sucking publisher, or as my blood-sucking ex-wife?
Gina Griffin: Oh, is that what you’re doing? Punishing me by killing the golden goose?
Richard Castle: Oh, come on. I may be petty and short-sighted, but I’m not *that* petty and short-sighted.
Gina Griffin: Really? Then why?
Richard Castle: Writing Derrick used to be fun. Now it’s like work.
Gina Griffin: Hmm. God forbid you should work. I mean, you could have retired him. You could have crippled him, you could have had him join the freaking circus. But no, you had to put a bullet through his head.
Richard Castle: Yeah. Real messy, too. Big exit wound. Don’t worry, Derrick Storm is not the golden goose here. I am. I wrote half a dozen best-sellers before him. What makes you think I’m going to stop now?
Gina Griffin: Oh, I don’t know. The fact the new book was due nine weeks ago.
Richard Castle: You can’t rush genius.
Gina Griffin: Genius, Richard? Try blockage. I heard you haven’t written in months.
Richard Castle: That’s ridiculous.
Gina Griffin: My sources are very reliable.
Richard Castle: Well, they’re wrong.
Gina Griffin: They’d better be. If I don’t have a new manuscript on my desk in the next three weeks, Black Pawn is prepared to demand the return of your advance.
Richard Castle: You wouldn’t dare.
Gina Griffin: Try me. Just try me.
Richard Castle: You know, I already returned that advance. I spent it divorcing you.
Stories of authors not meeting deadlines are legion. In fact, stories of authors missing deadlines by more years than you can count on one hand are not uncommon. Yet, what you don’t hear about is publishing companies suing authors for the return of their advances. That is what struck me as odd or out of place in the above-quoted scene.
(Yes, I realize she said “demand the return of” and not sue, but I’m trying to make a point here. And I’m perfectly willing to use Nathan Fillion to get your attention.)
Now, several possibilities might explain why you don’t hear about authors being sued for the return of their advances.
- Publishers don’t usually sue authors because it is bad for business. If the author still sells for you, then you don’t want to make them mad. If they aren’t selling for you, then they are likely what we in the law wrangling business call “judgment proof.” That is just a law wrangling way of saying you can’t get blood from a stone. So, if you aren’t going to get money back from the author, then any bad publicity you would get from the suit is more than enough to make you opt against suing.
- Publishers do sue, but no one talks about it because the publisher doesn’t want to turn off other authors or would-be authors and the author doesn’t want anyone to know they didn’t meet their deadline. In other words, both parties have strong incentives to keep it quiet.
- Publishers do sue, everyone knows about it, and Writer-in-Law is just clueless. Let me narrow that down: Writer-in-Law is clueless about publishers suing for the return of advances. I don’t want to leave that too open-ended, or we’d be here all night.
I’m pretty sure the answer is #1, with #2 perhaps playing a small role. But publishing and writing are such small worlds that you would think the stories would get out eventually even if both parties did not want it too.
So, how is it possible that this “reality” might change? What might cause publishers to start being more aggressive with authors who don’t meet deadlines? Well, that is what brings me to hybrid authors.
By “hybrid authors,” I mean authors who publish both through traditional publishers and through self-publishing channels. Being a hybrid author puts the author in a different relationship with a traditional publisher. An author who does not self-piublish, one who only publishes through traditional channels, is the “golden goose.” Publishing companies make money off the output produced by authors. However, a hybrid author is both a “golden goose” and a competitor; the hybrid author is a publisher as well as an author.
Now consider that fact in the context of the following hypothetical:
An author misses a deadline on a book for which a traditional publishing company has already paid the author an advance. So far, this is no different than any of the stories floating around about authors missing deadlines. But in addition to missing the deadline, this author also self-publishes a new book in a different series.
How is a publishing company supposed to feel about that? They’ve paid the author for a book. They haven’t gotten the book. Instead the author has self-published a book that will in their eyes compete with other books in the publisher’s line. So they’ve paid the author to compete with them.
Might that change their previously tolerant approach to deadlines?
At a recent writer’s conference, I heard one publishing attorney intimate that such a situation might change the attitude of publishers . . . to the point of pursuing legal action. He stopped himself as he started to say more about it. I suspect that he realized he was skirting the edge of client confidentiality requirements.
I’ve heard over and over again about how the hybrid approach is the new “diversification” for writing careers, and I can see how that makes sense in the quickly shifting publishing ecosystem. What I am suggesting is that we may also want to stop and think about how such an approach might alter the way publishers think and treat authors.
Happy Wayzgoose, everyone!
You do celebrate Wayzgoose, don’t you?
Wazgoose was a holiday originally celebrated by printers. Master printers would hold a celebration for their journeymen and apprentices as the season turned from summer to fall. At times, the day included pranks inflicted on members of the print shop who had breached some norm, often not replacing letter blocks in their proper places. Yeah, that guy had it coming on Wayzgoose.
Traditionally, printers celebrated Wayzgoose on August 24th though the reason for using that date is a source of some debate. Some say it was because August 24th is St. Bartholomew’s Day, and old St. Barty is the patron saint of printers and bookbinders. Others claim that August 24th was the date Gutenberg finished the first printing of the bible, but that August 24th was Gutenberg’s completion date lacks any historical evidence.
The word itself was most likely derived from an English phonetic spelling of a dutch term. Early English printers were heavily influenced by the Dutch; many of them would have learned their craft from Dutch printers.
Today, the term ‘wayzgoose’ typically denotes celebrations relating to or held by those involved with printing, books, or bookmaking – whether it be printing societies or bookstores or schools or museums or municipalities – and is not linked to any particular date.
So — Happy Wayzgoose!
The movable type printing press is oft cited as playing a role in the religious revolutions of the 16th and 17th centuries. The technology to print books and pamphlets created an ability to circulate ideas previously limited by word of mouth transmission and much less efficiently produced media (e.g. hand-transcribed manuscripts). This relationship is fairly well-known.
What many people do not know, however, is that this maelstrom of religious upheaval and new printing technologies also gave birth to copyright law.
One of the weapons in the religious struggles in England was the censorship of the religious views by whoever happened to be on the throne at any particular time. The problem that various monarchs ran into was that the same technology that had contributed to these religious struggles also made it very difficult to censor effectively. They simply could not keep pace with the number of books and pamphlets that could be produced with the new printing technology.
So, they enlisted the aid of the Stationer’s Company, the members of the book trade who had received a royal charter to organize into a Company in 1557. English Companies were similar to and had evolved from medieval guilds. The Stationer’s Company was comprised of bookbinders, booksellers, and printers.
During almost the whole period from 1557 to 1709, a time of continuous religious struggle, censorship was a major policy of the English government. This policy made it convenient for the government to give the stationers large powers, which it did in increasing measure, in order to have them serve as policemen of the press.
L. Ray Patterson, Copyright in Historical Perspective
This system of censorship was enabled first by the Star Chamber Decrees of 1566, 1586, and 1637 and then later by the Licensing Act of 1662. The government did not intend to create copyright law with these statutes. Rather, their concern was merely with censoring opposing religious views.
Instead, the Stationer’s Company copyright arose as an offshoot of the powers granted by the government for censorship. In other words, the powers granted to the Stationer’s Company allowed them to create a form of copyright.
They did so as a way of increasing the profitability of their business endeavors by ordering their own internal affairs. Essentially, the members claimed their “copies” – what we call works of authorship. Whichever member registered a particular “copy” would have the exclusive right to print, bind and sell books from that copy. This act was referred to as “entrance” in the register. An entrance in the register* might take the form of:
Owyn Rogers ys lycensed to prynte a ballette Called have pytie on the poore.
(Apparently, it wasn’t “and sometimes Y.” It was “Y all the tyme.”)
These rights were initially enforceable privately within the company, but later grew to be enforceable in courts of law. It is quite likely that some form of copyright existed prior to these censorship efforts and even prior to the royal charter of the Stationer’s Company, but whatever form it took it did not have the full legal standing and scope of what we would view as copyright.
Note that the author was not a part of this picture. Authors were not members of the Stationer’s Company. They were considered “above” commerce. Selling copies of their work was considered improper. They did in fact sell manuscripts to members of the Stationer’s Company, but this relationship maintained the air, if not the reality, of the earlier system of patronage.
So how did the we end up with a governmental copyright that was focused on authors?
For that we have to fast forward to the late 17th and early 18th century. Two changes in what the government was able and willing to do led the members of the Stationer’s Company to seek what became the first copyright statute.
First, the government moved away from a policy of censorship. This threatened to pull the teeth out of the powers that had permitted the Stationer’s Company to create their internal system of copyright. Second, the government became very sensitive to public disapproval of government granted monopolies.
So as the censorship laws expired, the members of the Stationer’s Company had to seek out some way to maintain their economic advantage – and their effective monopoly had given them quite an advantage. In a relatively short period of time, they had moved from an unimportant guild** to one of the wealthiest and most influential.
What they sought from the government was legislation that would enshrine their previously private system into public law. Importantly, those rights were perpetual. Once a member had rights to a particular copy, they had it forever.
So, how did we get limited-in-time copyrights focused on authors?
That is where the second change comes into play – public animosity toward monopolies. In that anti-monopoly environment, a fight arose between two groups within the Stationer’s Company – the printers and the booksellers. (The oldest group, the bookbinders, were largely irrelevant at this point.)
One group wanted no copyright while the other wanted a perpetual copyright – one that never expired. The twist is that both groups argued not for their own good, but instead argued on behalf of the “author.” After all, those advocating for a perpetual copyright had a difficult time persuading anyone that a new monopoly should be granted. So instead they appealed to what was in the author’s interest, and once one side made this rhetorical move, the other side followed suit. It was the use of the “good of the author” by both sides to the argument that produced the concept of copyright as an author’s right.
In fact, public sentiment against monopolies was so strong that it took many years for the stationers to get anything enacted. In 1709, the decades-long fight produced the first copyright statute – commonly referred to as the Statute of Anne, a much snappier name that the actual full title: “An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of such Copies, during the Times therein mentioned.”
*Some of the earliest known uses of the actual term “copyright” occurred in the company register. However, such uses were quite rare.
**The Hatter’s Guild was one of the six most powerful guilds. In comparison, the Stationer’s Company would initially have been somewhere down in the forties in terms of ranked importance. Hats were apparently a big deal.
One of my goals for this blog is to expose writers to other views of copyright law and policy. Writers, in my experience, tend to view copyright as akin property and as having a moral justification – “I created it, therefore I should own it.” I know that is an oversimplification; most writers’ views contain more nuance than that. But it is, I think, an accurate representation of the core of those views.
While one can find a thread of that view, the natural rights view, in copyright law and cases throughout the history of US copyright law, it is not the dominant or explicit justification for copyright in US law. It is a view more commonly associated with the continental European approach to copyright.
The Anglo-American approach to copyright has expressed a different narrative. In most explicit discussion of the theory underlying copyright law, copyright is about incentives. On the surface, this fits with the writer’s view. A creator would not invest the time and effort into writing a book unless the law provided a means to capitalize on that work. And if that were the extent of it, then we wouldn’t see many if any divergences between the natural rights view and the incentive view. However, the incentive view goes deeper when we examine the goals toward which those incentives are pointed.
The enumerated powers in the US Constitution includes the following in Article I, Section 8, Clause 8:
To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries
This is commonly referred to as the IP clause and it serves as the basis for federal legislative power covering patent and copyright laws.* Note that it sets forth as the goal “to promote the progress of science and useful arts” and not to promote the creation of works. The Constitution was drafted at the end of the 18th Century, a century featured a long debate in England about copyright and patent law. The Founders would have been quite familiar with the policy arguments.
The goal of the incentive structure set up by copyright law, so it is argued, is to promote benefits to society. That is done primarily by providing creators with economic incentives, but those economic incentives are not the ultimate goal. They are merely a means to an end.
This is where balancing comes in. In pursuit of that end, the economic incentives might be limited and balanced against the good of society. More specifically, copyright is seen as limiting the benefit to society by increasing costs of access to the works and at times reducing access to the works.
A theorist looking at the incentive theory would say that we want to maximize societal benefit. That means a couple of things. First, we should only give the bare minimum of copyright protection necessary to guarantee production, and not one bit more. Of course, there is no single line in the sand so to speak. It is a continuum in which more protection theoretically leads to more works, and less to less. Finding that optimum point for societal benefit is the incentive theorist’s goal. An incentive theorist only gives the bare minimum necessary to insure production because every increase in protection theoretically comes at a cost to society – some times literally, as in the works cost more. Second, most theorists would include not only production of a work but also access to the work as a necessary component of societal benefit. Greater and longer protection can in certain circumstances decrease the availability of a work.
It is this second point – the relationship between copyright law and access to works – that is the subject of a recent study that generated quite a bit of interest in academic copyright circles (and beyond – does The Atlantic qualify as beyond?):
How Copyright Makes Books and Music Disappear (and How Secondary Liability Rules Help Resurrect Old Songs)
Heald’s study is nicely summarized by Rebecca Rosen in The Atlantic. Her summary features the tagline: “A book published during the presidency of Chester A. Arthur has a greater chance of being in print today than one published during the time of Reagan.” Some high points from the article:
There were as many books available [on Amazon] from the 1910s as there were from the 2000s. The number of books from the 1850s was double the number available from the 1950s. Why? Copyright protections (which cover titles published in 1923 and after) had squashed the market for books from the middle of the 20th century, keeping those titles off shelves and out of the hands of the reading public.
. . .
“Copyright correlates significantly with the disappearance of works rather than with their availability,” Heald writes. “Shortly after works are created and proprietized, they tend to disappear from public view only to reappear in significantly increased numbers when they fall into the public domain and lose their owners.”
. . .
Heald says that the WorldCat research showed, for example, that there were eight times as many books published in the 1980s as in the 1880s, but there are roughly as many titles available on Amazon for the two decades.
With beginning of the semester fully upon me, I haven’t had the time to go through the full study and likely won’t anytime soon. However allow me to play the TL;DNR devil’s advocate.
First, I wonder if the game has changed. Has the recently emerged ability to keep any book in stock without warehousing costs (eBooks, POD) changed what will happen to books in the future? Perhaps this dip is a thing of the past. In pre-Internet days, shelf space was at a premium and the costs of physical books over their lifespans perhaps contributed to the effect seen in the study. In that world, it made sense for publishers to maintain supplies of the most recent books if those were going to produce the most sales in the short-term. And keep in mind, that the lack of these books availability in eBook or POD formats may in large part be due to the inability of publishers to undertake the digitization process for massive backlists and due to a simple loss of information on who owns the copyrights for the lost books (orphan works).** In a world where maintaining the availability of books is virtually costless, we may not see such a decrease in availability moving forward.
Second, I wonder how much influence school reading lists have on the availability of some of these older works. Is that list of canonical works skewing the data?
Third, even taking this effect into account, it may not indicate that current copyright law’s incentive calculus is off. Even if lengthy copyright duration is reducing the relative availability of works, the net creation and value produced by copyright incentives could still be ideal or at least positive. The number of available works is just one small part of the measurement of copyright’s results.
* Though perhaps counterintuitive to our modern word usage, “science” refers to copyright and “useful arts” refers to patents.
**The orphan works problem and proposed “solutions” could fill several more blog posts.
The Right of Publicity – Generally
Unlike most rights under the general umbrella of “intellectual property,” the right of publicity is based on state law and not federal law. The right of publicity is recognized either through common law or statute (and sometimes by both) by a little over half of the states. For example, California extends the right of publicity through both judicially-recognized common law and statute. California’s statute does a good job of summing up the basic scope of the right:
Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent … shall be liable for any damages sustained by the person or persons injured as a result thereof.
The common law version in California is almost identical with the exception that the common law version does not require that the appropriation have been done with knowledge (“knowingly”).
Because the right of publicity is state-based law, the actual contours of the right can vary from state to state. The most common difference is the duration of the right after an individual’s death. Interestingly, both the shortest and longest post-death durations exist within the same state – Tennessee. In Tennessee, the right of publicity does not survive an individual’s death if the right was not being exploited prior to the individual’s death. If, however, the right is being exploited, then it lasts as long as it is being exploited, in other words, potentially forever. Can you hear the ghost of Elvis saying “uh, thank you . . . thank you very much”?
My Normal “Right of Publicity Spiel”
Here’s how I had normally explained the right of publicity to groups of writers and artists (when I normally only had 30 seconds to fit it into after everything else): the difference in what you can and cannot do is the difference between “art” and “merchandising.” The former was protected by the First Amendment and the latter was not. If what the creator did looked more like am attempt at merchandising, then liability was more likely. Conversely, if what the creator did looked more like an attempt at art, then liability was less likely.
The Three Stooges case (Comedy III v. Saderup) and the Tiger Woods case (ETW v. Jireh Publishing) provided the exemplars for this approach.In Comedy III, an artist who specialized in charcoal drawings of celebrities was found liable for lithographs and t-shirts bearing sketches of the Three Stooges. In ETW, sports painter Rick Rush, through Jireh Publishing, was not found liable for selling limited edition prints of a painting titled “Masters of Augusta” featuring a number of images of Tiger Woods during his historic Augusta win.
The court in Comedy III did not say that Saderup’s charcoal drawings of the Three Stooges as sold in lithographs and on t-shirts were not First Amendment expression. The court explicitly said they were. Further, the fact that Saderup sold the images commercially did not itself take the images out of First Amendment protection. Rather, the court said that the question was whether Saderup’s expression was within the realm of First Amendment expression that would have to give way to the right of publicity. So the question for that court became what expression would be protected by the First Amendment and what expression would not be protected. What the court came up with to make that determination was the transformative inquiry later used in Keller:
When artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond that trespass, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist. On the other hand, when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity…. Accordingly, First Amendment protection of such works outweighs whatever interest the state may have in enforcing the right of publicity.
Is the alleged infringer of the right of publicity merely appropriating the economic value of the celebrity’s image (“merchandising”)? Or is the creator adding something expressive or attempting to say something through the use of the celebrity’s image (“art”)?
In ETW, that court concluded that Rush’s painting, although sold for commercial purposes, was entitled to full First Amendment protection. The court actually compared the depiction of the Three Stooges at issue in Comedy III with Rush’s painting in ETW, stressing what had been added by the artist.
Unlike the unadorned, nearly photographic reproduction of the faces of The Three Stooges in Comedy III, Rush’s work does not capitalize solely on a literal depiction of Woods. Rather, Rush’s work consists of a collage of images in addition to Woods’s image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods’s achievement in that event. Because Rush’s work has substantial transformative elements, it is entitled to the full protection of the First Amendment. In this case, we find that Woods’s right of publicity must yield to the First Amendment.
The Ruling in Keller
The Ninth Circuit’s decision in Keller v. EA created a great deal of consternation about both the potential for artists and authors to be held liable for the use of celebrities in their creative works and the potential chilling effects on speech created by fear of such liability.
Keller is a former college football quarterback who argued that EA’s use of his likeness in their college football video game violated his right of publicity. EA argued in response that the First Amendment protected their use even if that use was an infringement of Keller’s right of publicity. The Ninth Circuit summarized EA’s actions as follows. (Yes, I am too lazy to paraphrase it. No, it is not copyright infringement because, among other things, works produced by the federal government are not protected by copyright.)
Samuel Keller was the starting quarterback for Arizona State University in 2005 before he transferred to the University of Nebraska, where he played during the 2007 season. EA is the producer of the NCAA Football series of video games, which allow users to control avatars representing college football players as those avatars participate in simulated games. In NCAA Football, EA seeks to replicate each school’s entire team as accurately as possible. Every real football player on each team included in the game has a corresponding avatar in the game with the player’s actual jersey number and virtually identical height, weight, build, skin tone, hair color, and home state. EA attempts to match any unique, highly identifiable playing behaviors by sending detailed questionnaires to team equipment managers. Additionally, EA creates realistic virtual versions of actual stadiums; populates them with the virtual athletes, coaches, cheerleaders, and fans realistically rendered by EA’s graphic artists; and incorporates realistic sounds such as the crunch of the players’ pads and the roar of the crowd.
EA’s game differs from reality in that EA omits the players’ names on their jerseys and assigns each player a home town that is different from the actual player’s home town. However, users of the video game may upload rosters of names obtained from third parties so that the names do appear on the jerseys. In such cases, EA allows images from the game containing athletes’ real names to be posted on its website by users. Users can further alter reality by entering “Dynasty” mode, where the user assumes a head coach’s responsibilities for a college program for up to thirty seasons, including recruiting players from a randomly generated pool of high school athletes, or “Campus Legend” mode, where the user controls a virtual player from high school through college, making choices relating to practices, academics, and social life. In the 2005 edition of the game, the virtual starting quarterback for Arizona State wears number 9, as did Keller, and has the same height, weight, skin tone, hair color, hairstyle, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller. In the 2008 edition, the virtual quarterback for Nebraska has these same characteristics, though the jersey number does not match, presumably because Keller changed his number right before the season started.
Whether EA used Keller’s likeness in a manner that violated his right of publicity was not really disputed. Instead, EA said that video games are expressive and that their use of his likeness was protected by the First Amendment. The court of appeals chose to apply the transformative test from Comedy III in order to determine if the FIrst Amendment protected EA’s use. The court said that at least five factors should be examined in determining whether a use of a celebrity’s likeness is transformative and thus protected by the First Amendment despite infringing a celebrity’s right of publicity. Here are the five factors (citations omitted):
First, if “the celebrity likeness is one of the ‘raw materials’ from which an original work is synthesized,” it is more likely to be transformative than if “the depiction or imitation of the celebrity is the very sum and substance of the work in question.”
Second, the work is protected if it is “primarily the defendant’s own expression”—as long as that expression is “something other than the likeness of the celebrity.” This factor requires an examination of whether a likely purchaser’s primary motivation is to buy a reproduction of the celebrity, or to buy the expressive work of that artist.
Third, to avoid making judgments concerning “the quality of the artistic contribution,” a court should conduct an inquiry “more quantitative than qualitative” and ask “whether the literal and imitative or the creative elements predominate in the work.”
Fourth, the California Supreme Court indicated that “a subsidiary inquiry” would be useful in close cases: whether “the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted.”
Lastly, the court indicated that “when an artist’s skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame,” the work is not transformative.
The court, agreeing with the lower court, concluded that EA’s use contained little to no transformative elements, likening the case to No Doubt v. Activision (described below). In reaching that conclusion, the majority opinion (one judge dissented) emphasized that EA tried to make the portrayal as realistic as possible and portrayed Keller in the exact context he is famous for – as a college football player playing college football.
Three more cases: No Doubt, Winter, and Kirby
In order to add more depth and context to this analysis, and your education in law, I wanted to describe three more cases before getting into full commentator mode. At the least, reading few more results will give you a better “feel” for what’s going on in this legal area. All three cases applied the “transformative” test from Comedy III to determine if the FIrst Amendment protected the defendants from liability stemming from right of publicity claims.
No Doubt v. Activision
The rock band No Doubt entered into an agreement with Activision that allowed the use of digital avatars patterned after the members of No Doubt in the video game Band Hero. However, when Activision allowed payers to unlock the No Doubt avatars and use them to perform other songs, No Doubt claimed that the game company had gone beyond the license agreement and in doing so had violated the band members’ rights of publicity (among other claims).
No doubt you already know what defense Activision asserted – that the First Amendment protected their use. Just as the Ninth Circuit did in Keller, this court of appeals acknowledged that video games are expressive and entitled to First Amendment protection. However, they did not find that Activision’s use of the No Doubt avatars were protected from liability under the right of publicity claims. Instead of characterizing the uses as “transformative,” the court said the uses of No Doubt’s likenesses were pure “mimicry” and “conventional” “life-like depictions” designed to commercially exploit No Doubt’s fame.
Activision argued that having the No Doubt avatars perform songs they did not normally perform and having them do so in fanciful venues (e.g. outer space) constituted transformative expression. The court rejected those arguments.
Winter v. DC Comics
The rock musician brother, Johnny and Edgar Winters, sued DC Comics over what they argued was the use of their likeness in a Jonah Hex series.
In the 1990’s, DC Comics published a five-volume comic miniseries featuring “Jonah Hex,” . . . . The third volume ends with a reference to two new characters, the “Autumn brothers,” and the teaser, “Next: The Autumns of Our Discontent.” The cover of volume 4 depicts the Autumn brother characters, with pale faces and long white hair. One brother wears a stovepipe hat and red sunglasses, and holds a rifle. The second has red eyes and holds a pistol. This volume is entitled, Autumns of Our Discontent, and features brothers Johnny and Edgar Autumn, depicted as villainous half-worm, half-human offspring born from the rape of their mother by a supernatural worm creature that had escaped from a hole in the ground. At the end of volume 5, Jonah Hex and his companions shoot and kill the Autumn brothers in an underground gun battle.
In what should be a common pattern to you at this point, DC Comics defended against the right of publicity claims by asserting that the First Amendment protected their expression. The court agreed with DC Comics. They pointed out that, while the comics evoked the Winter brothers’ images, the comics distorted those images into something different (half-worm villains) and to the extent that the comics borrowed common looks used by the Winters brothers (e.g. the stove-top hat), the comics did so in order to lampoon and parody the brothers. Further, the court pointed out that fans of the Winter brothers who were seeking a comic representation of their musical heroes would not seek out these comics.
Kirby v. Sega
In Kirby, the lead singer of Dee-lite, Kierin Kirby, sued Sega over the character Ulala in their game Space Channel 5. She claimed that the character and her likeness were based on Kirby in her persona Lady Kier. Sega maintained that they had not based the character or her likeness on Kirby and that their game was protected by the First Amendment regardless of whether a court thought they had used Kirby’s likeness.
The court agreed with Sega’s arguments that the First Amendment protected them. Using the transformative test from Comedy III, the court said that Sega, even if they had co-opted Ulala from Kirby (which was not established), had added expression by making Ulala more stylized in appearance. The character was thin in the exaggerated manner often seen in anime characters. The character was placed in an environment unlike any in which Kirby had been portrayed – a 25th century space news show. Further, the characters dance moves were not similar to any from Kirby’s music videos.
Importantly, the court said that Sega did not have to show that any of their uses that were similar to Kirby had to be borrowed for the purpose of lampooning or parodying Kirby. Even though the court in Winter had pointed the parodic nature of DC Comics’ use of some aspects of the Winter brothers, such comment upon the original was not a requirement for First Amendment protection from right of publicity claims. Mere addition of artistic expression was enough.
The Big Picture
In trying to figure out “what the law is,” you have to look beyond the mere words used by a court to state a particular doctrine or rule. You also need to look at the facts of the controversy and the conclusion that is reached. It is only with that context that you can understand what the court means by the words it uses.
In thinking about these cases as a group and with an eye to the underlying facts, two observations emerge.
Observation, the First
There really is a stark difference between cases like No Doubt and Keller on one hand and Winter on the other hand. The defendants in No Doubt and Keller sought (1) to replicate the celebrities as exactly as their technology would allow, (2) placed them in the exact context of their fame, and (3) did so as their major selling point. In contrast, Winter (1) altered the celebrities and (2) placed them in an entirely new context, even while (3) maintaining the reader’s ability to recognize who they really were. That seems to define clear spaces that are protected and not protected by the First Amendment, even if a third space between those two is left a bit muddy.
Observation, the Second
Courts may treat video games differently. They acknowledge that video games are expressive media potentially deserving of First Amendment protection, but absent very weak facts a la Kirby, they arguably give video games less protection. I think there could be two related causes at play. First, courts may just view video games as games, rather than viewing them as something expressively equivalent to a book, painting, or even movie. Most appellate judges pre-date video games. Keep in mind that in 2010 a Supreme Court justice said that pagers were a new technology the potential effects of which were little understood. Courts don’t always get new technologies.
This lack of understanding also underlies the second potential cause. Courts do not appear to have learned how to apply existing law to interactive entertainment. There does not appear to be a real recognition or appreciation for the the fact that the “work of art” is created and experienced by the developers AND the player during game play. The result is that video games may have a harder row to hoe.
The Right of Publicity and Novels . . . or Elvis Presley, Werewolf Hunter
So. Since this blog is written primarily for authors, how would all of this apply to a novel or story? I want to think about this first in a general way and then second in a more specific way with some examples.
The Medium is the Message
Are written works, as a whole, likely to be treated the same as video games, paintings, or comic books?
I think the answer would be no. I can’t point to any particular pronouncement in any specific case, but my impression that a court would view a book differently than an image on a t-shirt or an avatar in a video game is pretty strong. Using my original dichotomy, a court would likely view a book more as “art” than “merchandising.”
In related areas, courts have treated written works differently than visual works, often unconsciously. I think they are viewed both as more expressive and as more work on the creation side. The aura of the “author” and of the “novel” come into play here. This is in distinct contrast to “mere” visual replicas (like those seen in Comedy III and Keller).
Another aspect of this is the informational nature of written works. An image of a celebrity might include only limited information – i.e. what the celebrity looked like. In contrast, it is hard to imagine a written work containing only that information. Would someone really be trying to sell a written work that consisted only of a description of the celebrity? Either it would describe the celebrity’s career or experiences or character, or it would put the celebrity into a set of fictional events. If it was the former, the First Amendment clearly covers it as news reporting or commentary. That type of protection is very strong vis-a-vis right of publicity claims. If it was the latter, then the author has a strong argument to have added transformative expression under the test laid out in Comedy III.
Where a book would be more likely to get in trouble is in a situation in which the book created a false impression that the celebrity endorsed the book. But that claim would fall under unfair competition law, or at least an understanding of the right of publicity sounding more in unfair competition law. This is one reason I say authors have to be even more careful with titles.
Let’s Talk Specifics
How would a book – a fiction book – look more analogous to Keller and Comedy III than to ETW and Winter? Let’s look at some examples.
In your new novel, Elvis fakes his own death and travels the back roads of the country in a pink ’55 Cadillac Fleetwood Series 60, killing werewolves with rhinestone buckshot. So, do you have a legal problem?
It seems to me that you would have some pretty strong arguments for transformative expression. Sure, you would be using his actual name, but you have taken the King out of his usual context (rock star, movie star, Vegas performer). That makes this example a little less analogous to Winter but it does not make it different from ETW.
If we go through the five factors used by the court in Keller, four fall in favor of the author, with one being a little more debatable. Elvis serves as a raw material for the work rather than as the sum and sole substance of the work. Creative elements prevail over purely imitative or descriptive ones. This is certainly not an author subordinating their artistic skill to create a conventional portrait of the King. The novel is primarily the author’s own expression beyond merely the likeness of Elvis. The only argument against transformative expression, and thus First Amendment protection, is that the economic value of the work derived solely from the Elvis’ renown. All in all, it would seem likely a court would side with the author.
For that matter, we don’t even have to make up a book featuring Elvis. What about Dean Koontz’s Odd Thomas, that features the spirit of the King? Or Daniel Klein’s series featuring Elvis Presley as a crime solving sleuth: Kill Me Tender, Viva Las Vengeance, Blue Suede Clues, and Such Vicious Minds? While Koontz’s use would seem to be lesser and he would be able to argue that his own fame is a major factor in selling his books, Klein could make neither of those arguments. Elvis is the central character in his books, and the selling power of his name is not the calibre of Koontz’s.
Of course, we can’t really say that the existence of these books conclusively demonstrates anything about how a court would judge their uses of Elvis. However, it can give us some hints. That these uses exist without lawsuits might tell us how these particular holders of rights of publicity think. They might signal that the Elvis estate does not think they infringe on Elvis’ right of publicity, or they might signal that the Elvis estate does not at least feel inclined to sue over such uses.
But maybe you think I’m stacking the deck with my examples. Maybe you are right. Perhaps I’m predisposed to a certain types of genre fiction, and that is in turn leading me toward one-sided examples.
So what would a book have to look like in order start to tilt the factors identified in Keller toward infringement? One thought is it could portray the celebrity as the celebrity in a normal context, but still be fictional. One example would be the book series by the Olsen twins. Such a book would be fiction (and thus not protected as news reporting) while attempting to capitalize as much as possible on the idea that “this is what Mary Kate and Ashley are really like.”
Or perhaps, and please don’t read anything into this segue, an erotica novel featuring a celebrity. It would be easier to see how a court might come to see the celebrity selling factor as predominant (while unconsciously feeling uneasy with the non-permissive use of a real person in erotica).
So, we can come up with some examples of how a book author might lose right of publicity case, but I can’t help but think we have to thin out what most would normally call a novel. It seems like you’d really have to try to keep out your own expression.
(Now don’t take this to mean I’m recommending you use a celebrity in your next novel. See my comments in the “Chilling Effects” section below. Also keep in mind that none of this is legal advice – specific facts matter and I don’t know yours.)
The io9 Horror Stories
As you might have gathered by this point, I don’t agree with the horror stories posited in the io9 article.
The Zuckerberg/Social Network example does not follow from the cases for me. Certainly, I can see how the EFF and io9 and the dissenting judge can read this sort of decision out of the language of the case and perhaps out of one interpretation of the Keller decision. But I don’t see how you think Zuckerberg would win such a suit when you take into account the First Amendment protections given in other cases including cases dealing with reporting of real events (which receive even stronger First Amendment protection) and when you take into account the lengthy history of biopics like this one.
The “past president and his spying drones” example (what the article calls science fiction that strives for realism) does not follow for me either. I don’t think the cases establish such examples as necessarily infringing, although I must admit I don’t know of a case similar enough to rule it out entirely.
Essentially, I disagree with the conclusion made by the dissenting judge:
The logical consequence . . . is that all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context. This logic jeopardizes the creative use of historic figures in motion pictures, books, and sound recordings.
I don’t see that as a logical consequence of the decision or of the broader case law in the area. Keller is narrower than simply “all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context.”
That doesn’t mean I disagree with criticisms of Keller. They are spot on, but not because of how a future court will rule. Instead, the decision deserves criticism because it is written in language that is too broad which could lead to chilling effects. See the next section.
But hey, I could be wrong.
But . . . Chilling Effects . . .
You will often see the phrase “chilling effects” used in discussions related to free speech concerns, and you see it highlighted in the EFF article on Keller. ‘Chilling effects’ refers to the deterrence of legal speech created by the fear of liability or even just the fear of the cost of litigation. It is a policy consideration that courts and commentators alike call upon to bolster refusals to limit speech. In other words, decision-makers basically say our decision impacts more than just the particular speech at issue in this particular controversy – we also have to keep in mind all the other legal speech that may never happen if we allow liability for this speech in this controversy.
The idea should seem familiar to readers of Writer-in-Law. I’ve preached chilling effects from the other side. In the “Can I?” post, I encouraged creators to take three separate questions into account whenever they are worried a particular artistic choice may led to legal problems. Will a choice cause a court to rule against me? Will a choice lead an intermediary to act against me? And will a choice get me sued? When the answer to the first question is “most likely not” but the answer to the third question is “maybe,” a writer’s speech may be “chilled” when that writer chooses not to make that choice (e.g. including a celebrity in their story) because he is afraid of the pain, expense, and uncertainty of defending a lawsuit.
Am I playing a role in increasing chilling effects? Perhaps. Am I reneging on what I said in “Can I?” post? No.
But I am trying to pull out the assumption about priorities that underlies the recommendations in “Can I?” on one hand and the negative view of chilling effects on the other. In “Can I,” the assumption was that the writer’s priority was getting their works in front of readers, or it was about making a career out of writing, or something along those lines. Note that this type of priority may run counter to making a stand for free expression. Creators often see it initially as an issue of “art” as in “I should not compromise my art.” We can carry that further though; we can recognize that the issue is not just about the integrity of “my art” but also about the value of the system as a whole. What does the ability of everyone to freely express their ideas add to society as a whole?
I ask the question not to preach for one or the other. Rather I ask the question in order to provoke a recognition of what choice is being made. In doing so, I’m not making a judgment; please don’t think I am criticizing anyone who makes the choice to avoid the possibility of getting sued. I think that is the right course to follow most of the time. As writers, we can add value to society in so many ways through our works that altering our expression to reduce legal risks is in no way an abdication of our role in shaping a better society. But there may be times when the risk is worth what we have to say. I touched on this briefly in the “Can I?” post when I talked about The Wind Done Gone. My goal is to make sure it is a conscious, well thought out choice.