Friday, May 23, 2008

Photographs of Useful Articles and the Forgotten Section 113(c)

There are many parts of the Copyright Act that go unread, and going unread their relevance is missed. Section 113(c) is one of those sections. The provision reads:

(c) In the case of a work lawfully reproduced in useful articles that have been offered for sale or other distribution to the public, copyright does not include any right to prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports.

The purpose of the section is to permit those selling lawfully made copies of commercial goods that may have some copyrightable element, like a label, to advertise the goods for sale without running afoul of the copyright law. A recent case seemed like the perfect occasion to apply the provision, but it wasn’t mentioned; instead, fair use was asserted, and denied.

The case is Designer Skin, LLC v. S&L Vitamins, Inc., 2008 WL 2116646 (D. Arizona May 20, 2008)(Docket No. No. CV 05-3699-PHX-JAT). The court gave the following facts:

Designer Skin, LLC is a manufacturer of certain indoor tanning products. It owns a number of registered trademarks in these products and its company name, and also owns the copyright in certain artwork related to its products. Designer Skin distributes its products through independent distributors. The relationship between Designer Skin and its distributors is governed by the terms of a distributorship agreement, which limits the distributors' ability to resell Designer Skin's products. Specifically, the agreement prohibits the distributors from selling Designer Skin's products to anyone other than certain qualifying tanning salons. More specifically, the agreement prohibits the distributors from selling Designer Skin's products to Internet resellers.

S & L Vitamins, Inc. is an Internet reseller: it buys various products in bulk and then resells those products on its websites at discount prices. Since some time near the beginning of 2004, S & L Vitamins has sold Designer Skin products on its websites. S & L Vitamins has obtained all of its Designer Skin products through tanning salons. It has not purchased any of these products directly from a Designer Skin distributor.

On its websites, S & L Vitamins displays thumbnail images of the Designer Skin products for sale and identifies those products by using Designer Skin's trademarks. In addition, S & L Vitamins uses Designer Skin's trademarks in the metatags of its sites and as search-engine keywords. On the current websites at issue, S & L Vitamins has posted a disclaimer stating that it is not affiliated with or authorized by any tanning lotion manufacturers to sell their products.

By suing (inter alia) for infringement of the labels, the case involves, in my opinion, a misuse of copyright to stop lower-priced resellers. (The court granted summary judgment to defendant on plaintiff’s trademark claims). On the copyright claim, plaintiff had registrations only for the artwork on the label and not the text, but no matter, the analysis should have been the same. Defendant also claimed it had taken its own photographs of the labels, but the court analyzed the issue as if it had copied from plaintiff.

Defendant relied on fair use, which the court rejected, regrettably. Here are excerpts from that discussion:

[First factor]
Regarding the first part of the inquiry, the court finds that while S & L Vitamins' use of the renderings has a commercial purpose, the commercial character of the use is “more incidental and less exploitive in nature than more traditional types of commercial use.” S & L Vitamins does not sell copies of the electronic renderings-it sells Designer Skin products. The renderings are used primarily to identify and market these products, to give Internet consumers a representative picture of what they are buying. Thus, S & L Vitamins profits from the use of these images only indirectly.

Regarding the second part of the inquiry, however, the Court finds that S & L Vitamins' use is minimally transformative at best. Citing to Kelly, S & L Vitamins argues that its use of smaller, lower-resolution images is transformative. In Kelly, however, the Ninth Circuit's finding of transformative use was primarily based on the additional fact that the defendant's use “served an entirely different function than [the] original images.” That is not the case here. Both parties use the images for the same reason: to market Designer Skin products to consumers.

Considering both aspects of this factor, the Court finds that the purpose and character of S & L Vitamins' use weighs slightly against fair use.

[Second Factor]
The electronic renderings at issue in this case were created by Designer Skin's graphic designer. The work product of a graphic designer, like any other artist, is fundamentally creative in nature. With that said, the renderings were not created for any aesthetic or educational purpose but for the functional purpose of selling products. Thus, although creative, the renderings do not seem to be at the core of intended copyright protection…. Nevertheless, because of the clearly creative nature of the work, this factor weighs slightly against fair use.

[Third Factor]
S & L Vitamins copied the entire work and uses it for the same purpose for which Designer Skin intended it to be used: to identify and market Designer Skin products to consumers. Under these circumstances, the third factor weighs against fair use.

[Fourth Factor]

Designer Skin argues that the relevant market is the authorized market for Designer Skin's tanning products. The Court disagrees. The relevant market is… the electronic images themselves. Designer Skin seems to concede that there is no market for these images. Designer Skin sells tanning products, not images of its products. Thus, S & L Vitamins' use of the images has not caused any market harm, and nor could it, regardless of how widespread its use might be. This final factor thus clearly weighs in favor of fair use.

Nonetheless, with three factors weighing against fair use (although two only slightly) and only one weighing in favor of it (albeit the most important one), the Court finds that copying the electronic renderings from Designer Skin's website and pasting them on S & L Vitamins' own sites for the purpose of selling Designer Skin's products is not protected by the fair use doctrine. …

This is a depressing approach to fair use, even a fair use analysis by the numbers. The use of the photographs was to sell lawfully tanning goods: if you are going to let consumers know what the product looks like, you have to show a picture of it, and if you are going to show a picture of it you have to show the whole thing. There was, finally, as the court noted, no harm to any legitimate market for the image. But the fair use issue could have been avoided by relying on Section 113(c), which was created for just such circumstances.


Anonymous said...

Is it really any surprise that someone would miss that clause? First of all it's buried in a subpart (c) of a general exception to the exclusive rights.

Second, even upon reading this clause it's not so obviously applicable in this context. Among other things, a label or picture "on" a bottle is not obviously a "work lawfully reproduced in useful articles." The clause is a good example of poor draftsmanship all around--I hope prof. Patry wasn't involved.

Let's break down this clause:
* "In the case of a work lawfully reproduced in useful articles"
As an initial point, this introduction would lead a reader to assume we're talking about use of works reproduced "in" useful articles. I would not have assumed, upon reading this introduction, we're going to be talking about using photographs of useful goods having copyright works ON them in advertising. Anyone else?

* "that have been offered for sale or other distribution to the public"
Are private sales out?
Does the preclude getting an injunction for FUTURE advertisements ("has been")?

* "copyright does not include any right to prevent the making, distribution, or display of pictures or photographs of such articles"
Of course it doesn't. The articles themselves were never copyrighted. This says NOTHING about the copyright of the "works" in that article.

* "in connection with advertisements or commentaries related to the distribution or display of such articles"
Reading this, I can't really tell what possible results I can arrive at: 1) pictures of the useful article are fine; 2) pictures of just the copyrighted image used in connection with the sale of the associated useful article; 3) pictures of just the copyrighted image in connection with ANY useful article; 4) What if I use the picture for the actual distribution (not just "advertisement/commentary") such as including it in my shopping cart; etc.

I don't think that this is much of a safe harbor and even if it was, the plain meaning (notwithstandin congressional intent) leaves A LOT of debate.

Yet another section of copyright law that really just needs to be rewritten.

William Patry said...

Thanks, YFTL, no I didn't draft that clause, which I do think applies: the useful article is the bottle, the lable is a part of the bottle, IMHO

Max Lybbert said...

I've heard it said that there's no such thing as a good "intellectual property attorney," but there are several good trademark attorneys, and good patent attorneys, and good copyright attorneys, etc.

Things like this make me think that copyright law is becoming so broad that it may be hard to find a decent "generic copyright attorney" but easier to find an attorney who understand copyright as applied to books and printed material, another attorney who understands copyright applied to software, another as applied to music, another as applied to architectural drawings, etc.

Of course Professor Patry's background would make him one of the few attorneys able to claim to understand copyright in general.

Anonymous said...

I agree that 113 applies here.

The problem of not reading the statute starts in law school and continues into practice. Getting students to read the statute is notoriously difficult - no matter how many times you tell them that the discipline demands it, they seem to suffer from some sort of allergy. And once they get into practice, time pressures cause many of them to resort to the shortcut habits they developed in law school.

Admittedly, some sections of the copyright act are truly nightmarish, but a surprising portion of it is well-drafted and disposes of otherwise knotty problems quite deftly. (I am sure that you had something to do with this.)

A said...

Agreed on the 113(c) analysis. That's a good catch that I never would have thought of. The copyright misuse route would have been interesting too, the way court have been using it recently. It seems to apply with particular force here since the manufacturer is in direct competition with the retailer and is trying to use their copyright to shape market practices -- the court even explicitly incorporates that fact into their fair use analysis...

I share your concern here, but honestly, I'm doubtful that the court's fair use analysis would hold up under scrutiny. The images are pretty clearly not the products being sold. --Though this raises an interesting question, in that fair use analysis generally concerns goods being sold rather than the means by which they're sold.

Of course, there's good reasons for that. First, the value supposedly being appropriated here doesn't arise under copyright (i.e. creative expression), it arises under trademark (i.e., advertising). There's established channeling-doctrine reasons to avoid double-protection under both trademark and copyright, which the result here seems to condone.

Second, advertising images are functional works, not creative works, and per Baker v. Selden, et al., shouldn't protected under copyright. (Except, perhaps, as useful articles, which might be another interesting way to sneak your 113 argument in.) The fact that a work's copyrightable doesn't mean that every commercial use of the work is protected under copyright.

Of course, all of this is already expressed in the statutes in 113 and in other various places like copyright misuse and copyright-trademark channeling doctrine, which is really the point -- this is a myopic reading of the statute.

But the reason it's interesting is that fair use analysis explicitly mandates a market-effects analysis, which actually seems to require an inquiry into the consumer-attraction effects of a copyright -- and, as mentioned, that's not generally something that copyright is used to protect. I think the court may have inadvertently found some tension here between copyright fair use and trademark fair use. There's certainly a problematic overlap between copyright as used to protect creative expression and copyright used to protect market share. Worth thinking about.

Anonymous said...

113(c) is kissin' cousins with 110(7)

RT said...

I think my earlier comment got eaten, but I made a post on the issue here.

Anonymous said...

Hi. I represented the defendants in this case. I don't know if I'm a great copyright attorney, a good one, or perhaps even a bad one. But here are some points you may find illuminating:

1. We won on this exact point in a virtually identical case in the Eastern District of New York, S&L Vitamins v. Australian Gold. I reported on it here:

2. We used essentially the same argument here -- the briefs are available through PACER or you can email me for them. We were hamstrung in this case by the arbitrary and almost cruel 17-extra-large-type-page limit on moving briefs in this court, which apply without regard to the complexity or quantity of grounds for a motion.

3. By far the most difficult part of this decision for me to understand is the retention of the "unfair competition" claim which the court explicitly states is based on Designer Skin's statement that it arises from the trademark infringements. Rebecca Tushnet discusses this. Normally you drop a footnote on the unfair competition piece and remind the court that such claims in almost every state normally follow the Lanham Act claims, but here we simply had no room and this seemed so obvious and axiomatic -- as did the rule of complete copyright preemption -- that omission seemed like a fair choice given the harsh page limits. Live and learn. It does not seem, however, that this should result in any additional liability exposure, even theoretically.

Anonymous said...

Designer Skin's statement that it arises from the trademark infringements.

Should be "from the copyright infringements"

Anonymous said...

You have to be kidding me!

"We were hamstrung in this case by the arbitrary and almost cruel 17-extra-large-type-page limit on moving briefs in this court, which apply without regard to the complexity or quantity of grounds for a motion."

"that omission seemed like a fair choice given the harsh page limits."

The case was filed in the United States District Court for the District of Arizona. The Local Civil Rules for this district state

"Unless otherwise permitted by the Court, a motion including its supporting memorandum...shall not exceed seventeen (17) pages" LRCiv 7.2(e)

and that "All pleadings, motions and other original documents filed with the Clerk shall be in a fixed-pitch type size no smaller than ten (10) pitch (10 letters per inch) or in a proportional font size no smaller
than 13 point, including any footnotes." LRCiv 7.1(b)(1)

Extra-Large-Type??? While there may not be any limits specified in the Eastern District of New York most other districts have some limits defined and all that I have read state a 10 point for fixed font sizes. I do not understand how any attorney could claim this as being hamstrung.

I've read the entire docket for this case and it is mind boggling why any attorney would use this as an excuse for not presenting the case fully before the Court. The remedy to this could have been quite simple, file an administrative motion requesting permission to exceed the "harsh page limits" given the "complexity [and] quantity of grounds for [the] motion." Of course, no such motion exists on the docket.

Mr. Coleman's claim that the rules are "arbitrary and almost cruel" are without merit and should be disreguarded as an attempt to justify a battle he simply lost. A battle which should have been won if all the issues relevant had been presented to the Court.

Anonymous said...

LOL -- Mr. Stottlemire, you are right. What could I have been thinking? Just make a motion!

I bow to your superior legal abilities, credentials and track record.

Anonymous said...

Mr. Coleman:

If you found my previously posted comment insulting, I apologize. It was not my intention. I had no desire to begin a “flame war” on Mr. Patry’s blog and was only voicing my opinion based upon the information available to me at the time I made the comment. As your visits to my blog have undoubtedly discovered, I do not possess superior legal abilities, credentials or experience and am unsure why you would claim that I do. I am merely a pro se defendant in an action brought against me by a corporation almost a year ago which involves a not so complicated issue revolving around the Copyright Act. Again, I apologize if you found my comment to be insulting.


William Patry said...

John, if I thought your comments were a problem I wouldn't have posted them

Ron Coleman said...

John, thanks for the clarification and calming remarks!

I'm afraid visits to my blog may demonstrate the same regarding me as you say about what visits to your say about you, but believe me, we do make the effort to give judges every opportunity to get the point!

Anonymous said...

Anyway, John, sorry I lost my temper. You're not standing in my shoes but that's precisely why I should remember you don't know how they pinch.

Unknown said...

Interesting discussion about 113 but I confess I read that section differently. I think that that section says that there is no violation of copyright when you create a photograph that captures an imaage that is copyrighted. So if I am a reseller of a copyrighed product I can take a photo of that product and not worry about copyright law. That makes sense to me.
But in this case they took the photograph created by the plaintiff and reproduced it in total for a commercial purpose. I don't think that type of taking should be fair use. If you want to resell my copyrighted product, fine. But I don't see that you should be able to use my photo of my product to encourage your sale. Invest in your product by taking your own photo.

William Patry said...

Hi Steve, I appreciate your distinction between the two fact situations.

Anonymous said...

This is a very interesting situation and discussion. This is a daily question on eBay among other sites. I agree with Steve. I monitor eBay for a marketing company. eBay sellers clearly know that a quality picture results in either a higher chance of a sale or more value in an auction. Many simply copy photos from websites or wherever. Some, which this issue touches on, take a picture of the box sitting in a room. There is a strong argument 113(c) applies, even though the pictures are clearly visible on the box, much like book covers on Amazon. But then some of them take pictures of individual pictures on the box. These are an obvious attempt to use what is permissible, ie a picture of the useful article, to get away with what is not, ie use of the manufacturer's pictures. It would be helpful in this case to view the pictures involved. If the pictures are of the bottles, taken by the discount seller, the opinion may be questionable. But if the discount seller is simply either taking the manufacturer's pictures or taking closeups of the artwork on the product label, there is a point.