Will filming Times Square now require negotiating with hundreds of copyright owners?

On 8 April 2013, The Motion Picture Association of America, along with the International Documentary Association and Film Independent, filed an amicus brief[1], supporting the NFL in their fight against (the very litigious!) Frederick Bouchat.

Bouchat’s fight with the NFL and the Ravens (an NFL team) started many years ago in 1996, when he sent off a drawing he created to the Ravens. Due to an internal miscommunication, Bouchat’s drawing became the basis of the Raven’s original logo (the ‘Flying B logo’) from 1996-98 – for which Bouchat received no credit or acknowledgment (for a comparison of the two, see here). In 1997, the US federal district court determined that this had been a breach of copyright by the Ravens, but interestingly, Bouchat received no damages as the jury found that the Raven’s profits in relation to relevant merchandise were not attributable to the use of the Flying B logo.

In 1998, Bouchat again sued the Ravens and the NFL, seeking an injunction to stop the use of the Flying B logo in season highlight films, football game clips, the Raven’s corporate offices and various display memorabilia. Interestingly (and worryingly for the film industry) the US Court of Appeals for the Fourth Circuit in a decision known as Bouchat IV, reversed the original district court’s decision and found that in relation to the historical highlight films (which were sold to the public) and the football game clips (displayed at the football games) the use of the Flying B logo did not constitute a fair use. The logo in these films/clips was shown primarily on players’ helmets, but also featured as a background in some cases and was an introductory graphic to some of the films. A key factor in the Fourth Circuit’s reasoning, was that it decided that the use of the logo in the films/clips did not ‘transform’ the purpose behind the logo’s use into a historical one – that the “logo was still being used as a logo…as an identifying symbol of the Ravens, (so) the purpose behind the use is not transformative”.

In 2012, Bouchat sued again. This time he sued the NFL for using the Flying B logo in TV documentary videos; the Ravens for displaying the Flying B logo in historical stadium picture displays, and the NFL and EA for using the Flying B logo in the Madden NFL video game via a ‘throwback uniform’ feature[2]. The US district court found the Flying B logo use in the documentary videos and the stadium picture displays were non-infringing fair uses. The Flying B logo used on the ‘throwback’ uniforms was found to not be a fair use, the judge concluding that the ‘throwback uniform’ feature would not have been added unless there was some commercial value to it, and that it was the Flying B logo and no other that added to the desired nostalgia value.

Bouchat has since lodged an appeal to the Fourth Circuit seeking to apply the reasoning that was used in Bouchat IV to the TV documentary videos and the historical stadium picture displays – an action that seems to have spooked the Motion Picture Association of America Inc and their supporters. Their (aptly dramatic) brief states that Bouchat’s latest appeal “seeks the power to rewrite history” and that they aim to have the court reaffirm that “copyright law does not permit copyright owners to hold historical facts hostage”. One of the brief’s claims is that were Bouchat IV to be applied more broadly, a “basic shot of an urban commercial centre like Times Square would require hundreds of negotiations.” – a veritable apolcapyse now!

By Terabass (Own work) [CC-BY-SA-3.0], via Wikimedia Commons

So what is the US concept of ‘fair use’ and how does it compare with Australian law?

The US ‘fair use’ exception is codified in s107 of the US Copyright Law. The section suggests a number of purposes that may be considered to be within the scope of fair use (such as scholarship, research or news reporting) but (unlike Australia) this list is not exhaustive. As such, the US ‘fair use’ exception has the potential to apply in more circumstances than the Australian equivalent concept of ‘fair dealing’. In the US, whether or not a use is ‘fair’ must be considered according to certain factors, such as: the purpose and character of the use (which takes into account matters such as whether the use is of a commercial nature, or is ‘transformative’, i.e. does the use add something new, with a further purpose or different character, altering the first with new expression, meaning or message?[3]); the nature of the copyrighted work; the amount and substantiality of the portion of the copyrighted work used, and the effect of the use on the copyrighted work’s value.

By contrast, Australian law has a concept called ‘fair dealing’ which applies in the specific circumstances of: research or study;criticism or review; parody or satire; reporting news;and certain professional advice[4].

So how might Bouchat’s case play out in Australia? Will we ever have a scenario where the filming of the Sydney CBD skyline in a movie could spark a copyright infringement claim from various logo owners? The short answer is, not likely – so long as the filming of the logos (or any other artistic works such as billboards or street art) is ‘incidental’ to the overall film. Further, there is another exception that protects the filming of (non-temporary) sculptures and other works of artistic craftsmanship in public places[5]. So, in most cases we can rest assured the ‘hundreds’ of negotiations that the Motion Picture Association of America fears – are unlikely to be required in Australia.

Interestingly, a key difference between the US and Australia, is that in the US, the NFL and the Ravens can argue that the use of the Flying B logo in the NFL documentary and the Raven’s historical stadium picture displays constitutes a ‘transformative’ use i.e. that each use of the logo adds something new by representing factual content, documenting and commenting on historical events, or functioning as a biography or career retrospective. Establishing this (whilst not being the only factor considered by the courts) can help weigh the balance of factors towards a finding of ‘fair use’. By contrast, contextual considerations of whether the use of a copyrighted work is for a historical or factual purpose is – strictly speaking – not part of Australian copyright law. It follows that, in order to be protected by the Australian ‘fair dealing’ exception, the NFL and Ravens would need to fit the Flying B logo’s use into the discrete categories of: research or study;criticism or review; parody or satire; or the reporting news.

So, whilst our ‘fair dealing’ exception is arguably more narrow in scope that the US concept of ‘fair use’ – a filming of our Sydney skyline should not cause our movie directors a headache anytime soon. We eagerly await the Fourth Circuit’s decision – to see if the filming of logo-packed locations like Times Square, will in future become a mission impossible.