I took this photo at a Robyn concert I attended last March at Madison Square Garden:
While my seats afforded me only a so-so sight-line to the stage, I had no trouble seeing the ocean of cell phones, in the hands of adoring fans, simultaneously recording (without authorization) Robyn’s every move and copyrighted note. Many of those videos were posted on social media moments after they were created. (Ever been frustrated by how hard it is to get cell reception in a concert hall or stadium? Surely real-time video sharing is partly to blame.) And, after the concert, fan enthusiasm spilled over onto New York’s subway platforms where hundreds joined in an impromptu singalong of Robyn’s "Dancing On My Own" while awaiting the A train. Unfortunately, I didn’t witness this myself (I took the 2 train), but after videos of this afterparty (featuring Robyn’s music, again without permission) spread virally, I read about it on social media and news sites. So, I feel as if I were there. We sure do live in interesting (infringing?) times.
I was reminded of this when I read a recent decision from a Federal District Court in Boston that involved another of my all-time favorite artists: Prince. In that case, Comerica Bank & Trust, the representative of the estate of Prince (the "Estate"), sued Kian Andrew Habib, an individual who had uploaded to YouTube five videos he had recorded during two Prince concerts. The videos – described by the court as "grainy," "blurry," and "poor quality" – range from approximately two and one-half minutes to nearly five minutes in length and include recognizable portions of six hits penned by the purple one, including "Nothing Compares 2 U," "Take Me With U" and "Sign o’ the Times." In each video, the camera focuses on Prince, but Habib occasionally pans between the stage and the audience. Habib didn’t add any audio commentary or write any text to accompany the videos; however, he did give brief titles to the videos, such as "Prince – Nothing Compares 2 U – Amazing LIVE rare performance – 2013" and "Prince showing off all his talents! LIVE at Mohegan Sun, Connecticut 2013".
YouTube removed the videos after receiving the Estate’s DMCA takedown notice but later restored them when Habib sent a counter-notice in which he contended that the videos were protected by fair use because they are "noncommercial and transformative in nature ... use[d] no more of the original than necessary, and ha[d] no negative effect on the market for the work." (Habib, who appeared pro se in the litigation, apparently didn’t consult with a lawyer when he sent his counter-notice but instead used "a prewritten legal description of fair use." Smart money says he pasted it from the internet.) Eventually, the Estate sued, alleging infringement of the copyrights in the six compositions and violations of the Federal anti-bootlegging statute. Following discovery, the Estate moved for summary judgment.
The District Court in Massachusetts granted the majority of the Estate’s motion for summary judgment. I will focus on three aspects of the decision: the fair use defense, the anti-bootlegging claim, and the implied license defense.
Copyright & Fair Use
The court easily found that Prince had established the elements of copyright infringement – i.e., that the Estate owned a valid copyright in the compositions, and that Habib had copied (without authorization) portions of those compositions. Accordingly, the copyright claim turned on whether Habib could establish that his use of the compositions qualified under the doctrine of fair use. The court concluded that he could not and that all four statutory factors favored the Estate. Slam dunk for Paisley Park. Here’s a rundown:
1. Purpose and Nature of the Work. The court found that the first factor weighed "decisively" in favor of the Estate. Habib argued that his videos were transformative because of (1) the manner in which he shot them, including his choice of the vantage point from which to record (wasn’t that largely dictated by the location of his assigned seat?) and his decisions regarding when and how often to pan between Prince and the crowd, and (b) the commentary and descriptions of the performances included in the videos’ titles. In the court’s view, Habib’s "verbatim copying" of Prince’s compositions did not imbue them with new meaning or add any original expression. The minimal expression that Habib did add – the short titles – were not transformative because they were nothing more than "message[s] of approval [that did] not endow the copyrighted material with any new purpose." The court also found that Habib had not presented any evidence that the videos were educational or historical in nature and distinguished this case from situations where courts had found the use of short excerpts of copyrighted works in documentary films to qualify as fair use. Finally, while acknowledging that Habib’s use of Prince’s compositions was non-commercial in the sense that Habib never earned money from the videos, the court found that Habib nevertheless profited from the use by driving traffic to (and enticing people to subscribe) to his YouTube channel. Indeed, the titles that Habib had claimed constituted transformative commentary were viewed by the court instead as bait – a barker’s call – to attract an audience and subscribers.
2. The Nature of the Copyrighted Work. The court held that because Prince’s compositions were creative works at the core of copyright law’s protection, the second factor weighed against a finding of fair. (No surprise here; the second factor is rarely determinative in fair use cases.)
3. The Amount and Substantiality of the Use. Habib argued that the third factor tilted in his favor because he used only 17 minutes of footage from two concerts that ran approximately six hours in total. The court disagreed, noting that the proper inquiry is how much of each composition, not how much of the concerts, Habib had copied. (The court didn’t, but could have, quoted Judge Hand’s famous line that "no plagiarist can excuse the wrong by showing how much of his work he did not pirate.") Habib had not only taken a significant quantity of each composition – in the case of "Nothing Compares 2 U" he took nearly the entire song – he also had copied "significant and valuable portions" of the compositions, including each song’s "heart." When considered in light of the non-transformative manner in which the songs were used (factor 1), the amount taken, qualitatively and quantitatively, was excessive, according to the court. Thus, the third factor also weighed against a finding of fair use.
4. Effect on the Market. Finally, the court concluded that the fourth factor also weighed against fair use. The Prince Estate argued that it lost revenue "whenever someone views an unofficial Prince video on another channel instead of an official Prince video on the official Prince channel" and that low quality videos like Habib’s harm its ability to "control the quality distribution" of Prince’s works and has a negative effect on the deceased artist’s "reputation for excellence." The court expressed some skepticism that Habib’s videos – grainy, blurry and with muffled sound – would act as a market substitute for high-quality official videos posted by the Estate. Nevertheless, the court concluded that Habib’s videos "plainly divert traffic away from the Estate’s official channels, thus depriving the Estate of advertising revenue" and that the poor-quality of Habib’s recordings "harm the Estate’s interest in policing the caliber of secondary uses of Prince’s musical compositions." (I wonder whether the record was sufficiently developed on the factual question of whether Habib’s videos "plainly" diverted traffic away from the Estate’s official videos. For example, the Estate’s official videos come up as the first result when you search on YouTube for "Prince Nothing Compares 2 U" or "Prince Nothing Compares 2 U Live." I assume (but don’t know for sure) that it would have required some scrolling down the search results to find Habib’s videos. Moreover, even if a particular user did find Habib’s video first, it is at least open for debate whether her hunger to watch a live Prince performance would be sated by Habib’s partial, grainy copy or whether she would have continued her search to ultimately find the Estate’s official, high-quality concert video.)
Violation of the Anti-Bootlegging Statute
The Estate also alleged that Habib’s actions violated the Federal civil anti-bootlegging statute. Section 1101(a) prohibits "fix[ing] the sounds or sounds and images of a live musical performance in a copy or phonorecord" and distributing the same, without the consent of the performing artists. This claim is distinct from Prince’s copyright claim, which is based on Habib’s incorporation, within the videos, of the copyrighted compositions (which are owned by the Estate). The anti-bootlegging claim, instead, is based on Habib’s capturing and distribution of videos of Prince’s live performance. Because those videos were fixed by Habib, he (not the Estate) owns the copyright in the footage itself (but not, of course, the compositions captured in the footage). Here’s an example that clarifies this point: if Habib had recorded Prince’s rendition of a song written by another composer or one in the public domain, Prince could not assert a claim for copyright infringement; nevertheless, he still could assert a claim under the anti-bootlegging statute based on the unauthorized recording of his performance.
Ultimately, the court did not rule on the Estate’s motion for summary judgment on the anti-bootlegging claim because this case presented a question of first impression: whether the bootlegging statute’s protections (like Copyright law) are descendible and may be invoked by an artist’s heirs and estate. The court afforded the parties additional time to brief this interesting question. (Whether the Estate will bother pursuing this remains to see, in light of its victory on the copyright infringement claims.)
The court rejected Habib’s argument that Prince had granted an implied license to record and post the videos of his performance. Based on the decision, it appears that Habib asserted this defense only with respect to the anti-bootlegging claims and not with respect to the copyright infringement claims. (The decision does not explain why.)
In any event, Habib argued that Prince had made public statements inviting him (and other fans) to do exactly what he did: record and share videos of his concert performances. Specifically, Habib cited a published interview in which Prince stated: "[n]obody sues their fans ... fans sharing music with each other, that’s cool." The question of whether an implied oral license exists turns on the intent of the parties. Here, the court found that Prince’s interview statement was "broad" and "made to the general public" rather than specifically to Habib; Prince’s statements did not set out any license terms; and (in the court’s words) they "did not demonstrate an intent to contract with Habib." Accordingly, the court granted summary judgment to the Estate.
The result here is not a huge surprise. I haven’t seen the videos. However, from the court’s description, it appears that Habib did little, if anything, more than capture Prince’s live performance of significant portions (quantitatively and qualitatively) of the compositions and that his videos were a market substitute (even if a poor quality market substitute) for the Estate’s official concert videos. Moreover, in the opinion, you get the sense that Habib was, shall we say, vexingly dogged about his belief that what he had done was fair and reasonable. For example, as support for granting the Estate a permanent injunction, the court notes that:
Throughout the course of this litigation, Habib has refused to engage with the demands of copyright law, has continued to post potentially infringing videos, and has antagonized opposing counsel, see Doc. No. 81-3 at 10 (tweeting disparaging remarks about Comerica’s counsel), even after Comerica "made several attempts to resolve the case on terms that merely required Habib to refrain from distributing unauthorized Prince videos in the future." Doc. No. 81-9 at 3.
Does this mean that all fan-shot concert videos are infringing and wouldn’t qualify for fair use? Definitely not. Fair use determinations require case-by-case analysis, with all of the statutory factors (and others, if applicable) to be "explored, and the results weighed together, in light of the purposes of copyright" (as Justice Souter tells us.)
Take, for example, the video (mentioned above) showing fans singing "Dancing on My Own" on the subway platform. An argument can be made that this video would qualify as a transformative fair use. (Of course, reasonable minds could differ on this question, as is often the case with fair use determinations.) Here goes. The video does not merely "supersede the objects" of the Robyn’s composition (to quote Justice Story). Instead, the composition is employed as (and therefore transformed into) a common language used by strangers - presumably from all walks of life - to acknowledge to each other (and express to bystanders) something they share: love for Robyn, a desire to keep the party going, breaking down the barriers that usually exists among people waiting for a train, the reckless abandon of doing something silly in a public place, and more. Indeed, the focus of the video is the fans’ collective performance of the song (not only the singing, but the joyful, bouncy dancing), more than the song itself. Moreover, the visuals in the video provides a stark contrast to the lyrics of the song, serving as a kind of commentary. "Dancing on My Own" is about the feelings of isolation and loneliness in the wake of a break up, an isolation that is made more acute when the protagonist finds herself at the dance club where (perhaps literally, but at least metaphorically) she sees her ex kissing a new flame, while she dances by herself in a corner. In contrast, in the video, the strap hangers sing the same song, but because they are dancing (and singing) together (and not "on their own") and joyfully, there is an ironic twist. Certainly, the moment captured is unique and worthy of reporting as news; as someone who takes the MTA daily, I can attest that this sort of thing doesn’t happen. Ever. Finally, the videographer does not appear to have made a commercial use of the video, and the video is unlikely to be a market substitute for recordings of the song or for any official Robyn concert video.
Of course, the videographer wasn’t thinking about any of this when s/he created and posted the video. And while the intent of an artist is not necessarily determinative, some would (I have no doubt) argue that the above is nothing more than the type of post hoc rationalization that Justice Kennedy warned about. As I said before, reasonable minds can (and will) differ on these difficult (but interesting) questions.