Category: copyrights

Gossip Mag’s “Fair Use” Claim in Publishing a Celebrity’s Wedding Photos Rejected

The National Law Review recently published an article regarding “Fair Use” of Celebrity Wedding Photos, written by Sarah Bro of McDermott Will & Emery:

 

The U. S. Court of Appeals for the Ninth Circuit reversed the district court’s grant of summary judgment in favor of Maya Magazines and Maya Publishing Group (collectively Maya), finding that the media company did not meet its burden of establishing that its publication of previously unpublished photos of a celebrity couple’s wedding constituted fair use. Monge  v. Maya Magazines, Case Nos. 10-56710, 11-55483 (9th Cir., Aug. 14, 2012) (McKeown, J.) (Smith, J., dissenting).

Latin American celebrities, Noelia Lorenzo Monge and Jorge Reynoso (the couple), filed an action against Maya in the district court for copyright infringement and misappropriation of likeness based on Maya’s publication of previously unpublished photographs of the couple’s 2007 secret Las Vegas wedding in the Spanish-language celebrity gossip magazine TVNotas.

Maya purchased the six wedding photos at issue from a paparazzo, who was also an occasional driver for the couple. The paparazzo had previously tried to “sell” the photos to the couple to relieve a debt he owed to one of them. The photos were on a memory chip containing hundreds of photos of the couple that were unrelated to the nuptials.  In addition to publishing one of the wedding photos on the cover of TVNotas, Maya also published a two-page spread within the magazine showing all six wedding photos interspersed with captions. Due to the privacy of the wedding (to protect Monge’s image as a single pop star), the six photos were the only published images of the nuptials.

Because federal registration of a copyright is required before bringing an infringement action, after learning of Maya’s publication of the photographs, the couple registered copyrights in five of the images. The couple’s lawsuit was filed shortly thereafter.

The district court dismissed the misappropriation of likeness claims and granted Maya’s motion for summary judgment based on its affirmative defense of fair use of the copyrighted photographs. On appeal, the sole issue was whether the district court properly granted summary judgment based on the fair use doctrine. Accordingly, the court analyzed the four fair use factors under copyright law, finding that none of them topped in favor of Maya.

1.  The Purpose and Character of the Use of the Copyrighted Work

Although it agreed that the wedding photos were newsworthy, the 9th Circuit reaffirmed that news reporting alone is not “sufficient itself to sustain a per se finding of fair use.” Thus, the commercial nature of the use of the photographs was determined to weigh against a finding of fair use. The Court also found that the reproduction of the photos as a two-page montage with captions was not a sufficient transformation of the original works to allow Maya to properly claim fair use.

2.  The Nature of the Copyrighted Work

The 9th Circuit explained that photographs—even those that are not highly artistic in nature—are entitled to copyright protection.  Even though the unpublished status of a work does not bar a finding of fair use, the court cited Harper & Row v. Nation Enters., stating that the couple’s right to control the first public appearance of its copyrighted photographs outweighed Maya’s claim of fair use.

3.  The Amount and Substantiality of the Portion Used in Relation to the Work as a Whole

With respect to the third fair use factor, the 9th Circuit noted that the only existing photos of the couple’s wedding and wedding night were used in the magazine, and that Maya’s minimal cropping of the photos meant that the “heart” of each copyrighted photograph was published. Because “Maya used far more than was necessary to corroborate its story,” this factor also weighed in favor of the couple.

4.  The Effect Upon the Potential Market for the Copyrighted Work

Finally, the court found that Maya’s unauthorized publication of the photos “substantially harmed” and “completely usurped” the couple’s potential market for the photos.  The court disagreed with the district court’s claim that there was no potential market for the photographs because the couple did not intend to sell their publication rights in the images.

Instead, the court explained that the potential market for the photos existed independently of the couple’s intent to market the photos. Specifically, the court focused on the fact that the couple was in the business of selling images of themselves and that Maya had previously paid Monge to pose for one of its publications and had also paid Reynoso for pictures of his prior marriage.  Therefore, the court determined that Maya’s purchase of the photos from the paparazzo confirmed the potential market for the photographs.

The Dissent

The dissent argued that the decision of the panel majority was inconsistent with Supreme Court precedent and undermined the fair use doctrine and free press. In particular, the dissent stated that it would have affirmed the district court’s ruling with respect to at least three of the photographs that “directly proved” the couple’s marriage. The dissent also noted that the nearly 400 photos on the memory chip (which were unrelated to the couple’s wedding) constituted a “compilation” and that Maya’s use of only five of those 400 photos was not a substantial portion of the work in relation to the whole.

© 2012 McDermott Will & Emery

When Can You Claim A Color As Your Trademark?

In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no “per se rule that would deny protection for use of a single color as a trademark in a particular industrial context.”  The Court found that the single color red on the sole of a women’s shoe that contrasted with the color on the upper portion of the shoe could be protected as a trademark in the fashion industry. A Federal District Court in California ruled recently, that a company’s use of the color orange for markings and text on its medical syringe could not be protected as a trademark since the color was “functional” when applied to that product. It determined that the color orange was functional in the medical industry because it signifies that a device is for oral use. So, how does this color-as-a-trademark work?

Many companies have successfully obtained trademark protection for a single color, for example,  United Parcel Service’s registration for the color brown for transportation and delivery services, Reg. 2901090; Tiffany’s multiple registrations for a particular color of  blue used on bags, boxes and various other products and services, Reg. Nos. 4177892, 2359351, 2416795, 2416794, 2184128; 3M’s registrations for yellow as a trademark for telephone maintenance instruments and POST-IT® notes, Reg. Nos. 2619345, 2390667; and Owens Corning’s registrations for the color pink for masking tape, insulation, and other products used in the building and construction industry, Reg. Nos. 3165001, 2380742, 2380445, 2090588, 1439132.

In Qualitex Co. v. Jacobson Prods. Co., the U.S. Supreme Court held that color alone may be protected as a trademark, “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” The Court held color may not be protected as atrademark when it is “functional”. There are two types of functionality: “utilitarian” and “aesthetic.” A color is functional under the utilitarian test if it is essential to the use or purpose of the product, or affects the cost or quality of the product.  A  color is aethestically functional if its exclusive use “would put a competitor at a significant non-reputation-related disadvantage”.   If color “act(s) as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function,” it can be protected as a trademark. So, how do you know if a color you are using or plan to use in your business can be protected as a trademark to the exclusion of your competitors?

Protecting color as a trademark can be a very powerful advantage if the color has no particular function or meaning in the industry in which it is used. However, in order to claim color as a trademark, the color must be showcased as a source indicator for products or services in its marketing campaigns and advertising materials. Good examples of this are UPS’s reference to itself as “brown” in its advertising and Owen Corning’s blatant use of the color pink in its advertising.  Both companies very clearly highlight a color in their ads and identify it strongly with their respective products and services. This type of careful and clever planning, implementation, and marketing strategy is critical to developing a strong, unique and highly recognized color trademark.

Whatever color is used, it must not be “functional” in any respect in the industry in which it is used. Various “functionality” tests have been developed by the courtsover time, and  some include:

  • whether the design (or color) yields utilitarian advantage
  • whether alternative designs (or colors) are available
  • whether advertising touts utilitarian advantages of the design (or color), and
  • whether the particular design (or color) results from a comparatively simple or inexpensive method of manufacture.

Functionality is evaluated within the context of the specific industry in which the goods or services for which color is claimed as a trademark will be offered. Had the markings on the medical devices been red instead of orange in the case before the Federal District Court in California mentioned above, it is possible that there would not have been a finding of functionality. Thus, know your industry before selecting a color on which to focus your marketing and advertising efforts.

Thinking outside the box when selecting trademarks and planning marketing strategy is critical in any industry. The explosion of social media and changes in traditional advertising and marketing methods have changed the way products and services are recognized. Companies need more unique and  nontraditional approaches for a competitive edge. Promoting non-traditional trademarks such as a color, or other unique source indicators such as sounds, scents, flavor, and product shapes, may provide a fresh method to attract and entice a wider audience.

So, get out those color wheels and start plotting a new course.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.