Viacom Says User Infringed His Own Copyright

Chris Knight writes "I ran for school board where I live this past fall and created some TV commercials including this one with a 'Star Wars' theme. A few months ago VH1 grabbed the commercial from YouTube and featured it in a segment of its show 'Web Junk 2.0.' Neither VH1 or its parent company Viacom told me they were doing this or asked my permission to use it, but I didn't mind it if they did. I thought that Aries Spears's commentary about it was pretty hilarious, so I posted a clip of VH1's segment on YouTube so that I could put it on my blog. I just got an e-mail from YouTube saying that the video has been pulled because Viacom is claiming that I'm violating its copyright. Viacom used my video without permission on their commercial television show, and now says that I am infringing on their copyright for showing the clip of the work that Viacom made in violation of my own copyright!"

Pulled clip is...

[Whiney Mac Fanboy]

Pulled clip is here. [politicalsoup.tv]

(I have no idea about the legalities, but viacom seems to be at the very least pretty fucking rude here).

Re:Depends

[Aladrin]

"A. You agree not to distribute in any medium any part of the Website, including but not limited to User Submissions (defined below), without YouTube's prior written authorization."

Do you think they got that before they played the clip on live TV?

"A. The content on the YouTube Website, except all User Submissions (as defined below), including without limitation, the text, software, scripts, graphics, photos, sounds, music, videos, interactive features and the like ("Content") and the trademarks, service marks and logos contained therein ("Marks"), are owned by or licensed to YouTube, subject to copyright and other intellectual property rights under the law. Content on the Website is provided to you AS IS for your information and personal use only and may not be downloaded, copied, reproduced, distributed, transmitted, broadcast, displayed, sold, licensed, or otherwise exploited for any other purposes whatsoever without the prior written consent of the respective owners. YouTube reserves all rights not expressly granted in and to the Website and the Content."

No, YouTube doesn't own the content that users upload.

Re:Depends

[Aladrin]

Oh, sorry, 1 more... Probably the most important, too.

"C. For clarity, you retain all of your ownership rights in your User Submissions. However, by submitting User Submissions to YouTube, you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website and YouTube's (and its successors' and affiliates') business, including without limitation for promoting and redistributing part or all of the YouTube Website (and derivative works thereof) in any media formats and through any media channels. "

Re:Fair Use

[Anonymous Coward]

So if I post an entire movie but give a commentary of it alongside its fair use?

MST3K would have been far more hilarious if this were true. Sadly, it is not.

From Wikipedia [wikipedia.org]:

The third factor assesses the quantity or percentage of the original copyrighted work that has been imported into the new work. In general, the less that is used in relation to the whole, e.g., a few sentences of a text for a book review, the more likely that the sample will be considered fair use. Yet see Sony Corp. v. Universal City Studios for a case in which substantial copying--entire programs for private viewing--was upheld as fair use. Likewise, see Kelly v. Arriba Soft Corporation,where the Ninth Circuit held that copying an entire photo to use as a thumbnail in online search results did not weigh against fair use, "if the secondary user only copies as much as is necessary for his or her intended use." Conversely, in Harper & Row, Publishers, Inc. v. Nation Enters,[9] the use of less than 400 words from President Ford's memoir by a political opinion magazine was interpreted as infringement because those few words represented "the heart of the book" and were, as such, substantial.

Before 1991, sampling in certain genres of music was accepted practice and such copyright considerations as these were viewed as largely irrelevant. The strict decision against rapper Biz Markie's appropriation of a Gilbert O'Sullivan song in the case Grand Upright v. Warner[10] changed practices and opinions overnight. Samples now had to be licensed, as long as they rose "to a level of legally cognizable appropriation."[11] In other words, de minimis sampling was still considered fair and free because, traditionally, "the law does not care about trifles." The recent Sixth Circuit Court decision in the appeal to Bridgeport Music has reversed this standing, eliminating the de minimis defense for samples of recorded music, but stating that the decision did not apply to fair use.

About 20 years out of date

[gvc]

Copyright notices have not been required in the U.S. since 1989 [copyright.gov].

Re:Fair Use

[TheGreek]

Listen moron - you cannot take someone elses work and do anything with it unless the author of such work agrees to it. That is theft pure and simple. There is no such thing as "Fair Use" for any material.

Yeah, I'm a real moron. Let's go look at US Code [cornell.edu], shall we?

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include--

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Who's the moron now?

Re:Star Wars

[Binestar]

I'm just surprised that George Lucas hasn't filed a suit yet! ;-)

Why is that? LucasFilms encourages [atomfilms.com] little films like this.

Re:Fair Use

[LordKronos]

He then used Viacom's derivative work, but, it seems, didn't provide any commentary on the clip you uploaded to YouTube. Instead, he just made a direct copy. That's copyright infringement.

Sure he did. He posted it on his blog, then discussed how funny the segment was, and then went on about how it turns out that, through exposure like this, his cheesy campaign ad is actually doing more for awareness of the causes he supports than it did for his career, but that he's ok with that because trying to fix those problem is more important to him than the job he ran for.

The problem is that his commentary was textual with the video embedded, so when you see it directly on youtube you don't see any of that corresponding commentary (unless he posted commentary in the comments too...no way to know now, since the page is gone).

Lawsuit happy when it suits them

[infonography]

I would say that his commentary is the original and theirs was the commentary of his commercial. His showing it can be construed as posting a rebuttal or comment on his own work.

Has the ultimate originator of the work His only commentary needed was to say something like 'hey look who used my commercial' That would have satisfied the fair use, even if only has title to the clip. His Content was part of the clip. Before or after it's manufacture is fairly moot. Viacom's use was also fair use.

Likely they had some junior birdman lawyer who should have poured himself a large steaming cup of STFU and not bothered. Viacom pays no attention to who they send notices about. They've sent notices on stuff they don't own before.

If I had post it not being party to the original clip or the commentary then they would have grounds. But then I didn't. However I now can as I have commented on it and can repost my comment and the clips in context. Because thats Journalism. For further details note Slashdot's comment on user comments and my own URL. (BTW, I am not going to repost this)

Re:Wrong.

[Dunbal]

The commentary on your clip renders their use of it fair use. You have no actionable claim against them.

      No, this is not fair use if they use the entire clip. It's like saying you can reproduce an entire novel by putting quotes on the first and last pages. They are allowed to show a SMALL PORTION of the clip under fair use, "for the purposes of review".

Comment removed

[account_deleted]

Comment removed based on user account deletion

I've never worried that I've been "damaged" ...

[TheKnightShift]

Feeling "damaged" or "mocked" by this hasn't even entered into my mind, until you suggested the notion. Look, I was *delighted* that VH1 chose to use this! Some friends called our house one Sunday morning last month to tell us that VH1 was running this on Web Junk and that the show was coming on again. We were about to head off for church but decided to stick around and check it out. I was literally in the floor laughing at how they used it, especially Spears' comment about how "he won't be bangin' the teachers!" Hilarious stuff. I just want to be able to post this to YouTube so that others can see how far this ad went. I definitely DIDN'T think that it would wind up going so far beyond the local level. Certainly never thought it would be shown on VH1. I'm rather proud of that. Speaking of which: there were sixteen candidates running for five seats. EVERYONE was doing something crazy it seems to try to get elected! There were some other candidates running wacky TV commercials too. Before it was over with our lil' school board race had been written about in The New York Times, most of the big newspapers in the state and had received some other TV coverage as well. By every measure, the campaign season for this was as clean and vibrant and fun to behold as politics should be.

Yet another confused Slashdot header

[The Empiricist]

There seem to be at least three works at issue here, and none of them suggest that Viacom accused kdawson of infringing a copyright held by kdawson.

Work #1: Star Wars. This is an original work (although its origins can be traced to several other works [straightdope.com]).

Work #2: The Star Wars-themed commercial produced by kdawson. This might be a derivative work of Star Wars, or it might be an original work. Since George Lucas is not involved here, who cares? Viacom cannot argue that because kdawson's work might infringe on the works of George Lucas that Viacom has the right to use kdawson's work.

Work #3: The Viacom produced VH-1 segment featuring the Star Wars-themed commercial and commentary on that commercial. Sure, kdawson could sue for Viacom's use of the Star Wars-themed commercial without permission. That does not mean that Viacom can't protect the copyright in the commentary it produced. Viacom did not produce Star Wars-themed commercials that were derived from the Star Wars-themed commercials kdawson produced. Viacom created a compilation of the Star Wars-themed commercials kdawson produced and original commentary.

For example, if Robert Ebert reviews a movie and takes a few quotes from it, his commentary is still his. The movie producers do not have the rights to use that commentary (except, most likely, minimal non-infringing quotes).

If kdawson is not happy with Viacom's efforts to keep its commentary off of YouTube, then kdawson can a) sue Viacom for infringement of kdawson's work to pressure Viacom to be a bit less tight-fisted with its copyrights or b) send a counter-notice to YouTube to put-back [chillingeffects.org] the Viacom clip, then prepare for a defense if Viacom decides to sue for infringement by posting the Viacom-produced commentary.

The court of Slashdot, while a fun place to vent, is unlikely to have much effect. An appeal to change public policy to prevent users from being accused of infringing their own copyrights only makes sense if that is what is happening. That does not seem to be the case here.

Re:Fair Use

[Merk]

so I posted a clip of VH1's segment

Sure sounds to me like it wasn't the entire show.

Re:Two infringements make a right?

[Random832]

While Viacom was stupid in this matter, they are techhnically correct (the best kind of correct ;-)). He did infringe Viacom's copyright - they own everything surrounding his clip that was a part of that program.

No, it's an unauthorized derivative work - they own NOTHING. 17 USC 103(a).

Re:Fair Use

[cpt kangarooski]

Fair use is limited to reasonable excerpts.

No it's not. The amount and substantiality of the work are factors, but not determinative on their own. Sometimes a fair use can involve an entire work, e.g. certain instances of time or space shifting. Sometimes using only excerpts is nevertheless unfair, as in Harper & Row v. Nation, where excerpts from a book were published unfairly.

What is necessary is to look at the use overall, which typically will include looking at the four enumerated factors. The analysis isn't mechanical at all. Even if most of the factors weigh against the user, the use can nevertheless be fair. Even though it sounds like a tautology, a fair use is a use that is fair; there's no bright line rules as to what that will be, and it varies with the circumstances surrounding each individual use. That is, not each type of use, but each specific use. If Alice and Bob each are parodists, say, and each makes a parody of a work, there's nothing to prevent Alice's work from being fair, while Bob's is unfair. You have to look at each independently.

Otherwise, what's stopping me from copying an entire movie, then adding "I liked this movie" at the end.

Do you think that it would be a fair use? Without knowing more about your hypothetical situation, I really couldn't say.

Re:He should counterclaim

[TheKnightShift]

"Chris, if ever you had the opportunity to be an asshole but be right about being an asshole, now is the time. Take Viacom to the cleaners for all of us."

I don't want to be an "asshole" about it (my wife would never let me live it down for one thing... :-)

But I will try my best to take this as far as it can possibly go, if that's what it takes to get some basic acknowledgement and respect for anyone who creates content.

Someone here suggested that I'm doing this because of "political damage", as if I'm bitter about how the original commercial was used. Heck I knew when I made the thing that I would get heat for it. And I did: the day it started airing on local television, some people were calling in during the live show and said that I must have "mental problems" for blowing up the school etc.

In the end, I got almost 4,700 votes: not enough to place in the top 5 finishers and get a seat but it put me 8th place out of 16 candidates. I've never been bitter about that: running for office like this was one of the best experiences of my life and not for a moment have I felt upset about not winning. There was just too much good that did come out of it to feel upset for any reason. And that this commercial seems to have such long-term staying power is one of the best things that came out of it.

I'm delighted that VH1 thought it funny enough to include in their show. I just want to be able to show the world how delighted I am that they are using it. Shouldn't anyone in my position be entitled to that much?

Re:Fair Use

[cpt kangarooski]

one possible remedy would be for the copyright of the derivative work to revert to the original work's creator.

No, that would not be possible. A work which includes derivative material used unlawfully is uncopyrightable in that portion per 17 USC 103(a). And forcibly handing over the copyright to original material would be an extreme and likely unacceptable remedy.

read the YouTube license...

[Anonymous Coward]

...instead of talking out of your ass. Original Post is correct.
VH1 probably has an agreement with YouTube.

"C. For clarity, you retain all of your ownership rights in your User Submissions. However, by submitting User Submissions to YouTube, you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website and YouTube's (and its successors' and affiliates') business, including without limitation for promoting and redistributing part or all of the YouTube Website (and derivative works thereof) in any media formats and through any media channels."

Re:Pulled clip is...

[Actually, I do RTFA]

"Copyright(C)2007 by ... All Rights Reserved" is just an indication to other people out there that you know you have those rights, and are implying you will exercise them. It doesn't changeyour legal rights in the slightest. Just like (where I live at least), a "Home Invaders will be shot" sign is not a prerequite for shooting a home invader, just a warning so you are less likely to have to.

IANAL

Here's how this works, Chris

[Torodung]

You lose. You call Viacom to complain, they call George Lucas, and then launch their own defense. You now have two, count 'em, two lawsuits on your hands, against high-powered, connected, retainered corporate lawyers, and you're running for public office and that hits your town papers.

Good luck.

Also, if you published their interview material, that is their copyright, so yours is the only likely violation as Viacom is almost certainly "fair-use" defensible as a major media organization showing short clips of the local elections on their show.

You need permission to show their stuff, unless you have a "fair-use" defense of your own, but even if you do have one ready, they can still prosecute (and seek an injunction/take down in the meantime) because "fair-use" is a defense, not a right. You have to prove it in a court.

So applying to Slashdot isn't going to help here. File suit and claim "fair-use" and end the take down. Or, quietly count your blessings and stay clear. I know what I'd do.

Might I add, nice General Crix Madine [starwars.com] haircut.

--
Toro

Here's an error that you made, Toro

[TheKnightShift]

Toro,

Show me where I violated George Lucas's copyright, please.

I was VERY careful not to include elements from the Star Wars movies. Using $2 toys from Wal-Mart and your own homemade lightsaber effects doesn't count. Not to mention that this commercial was not being done to make any money (heck I LOST money if anything).

Viacom's use of the clip was done for commercial purposes. And I've never had any particular problem with that.

I do however have a problem with them telling me that I cannot use a derivative work of my own original material, when I'm not even asking for financial compensation for it (and if you ever saw the original clip on YouTube you would no doubt note that I was VERY explicit about the clip being from VH1 i.e. free advertising for them).

BTW, it might interest you to know that the commercial has been linked from George Lucas's educational website Edutopia.org as a recommended link for educators to visit. That's not necessarily an endorsement of the commercial, but I've always thought it was a niece gesture :-)

Actually, it's _you_ who seem not to understand

[_.- thimk! -._]

While I would like to start with the polite and obligatory INAL, I think it's clear to me (even as a layman, albeit an educated one) that you're pretty much categorically wrong on all counts, except possibly that he should get a lawyer.

Regardless of of the opinion of your Time Warner overlords, the purpose of copyright is to protect and advance the public interest, encouraging creativity in the creation of more works, while finding a reasonable balance to protect the artist's rights (originally for a little more than a decade, but currently, now within their lifetime).

The personal opinions of a bunch of pointy-haired stuffed suits do not supersede copyright law.

In reference to your stated opine about works for hire:

See US Code, Title 17 (Copyrights), Chapter 1 (Subject Matter and Scope of Copyright), Section 101 (Definitions) :

A "work made for hire" is--

1. a work prepared by an employee within the scope of his or her employment; or
2. a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. In determining whether any work is eligible to be considered a work made for hire under paragraph (2), neither the amendment contained in section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-113, nor the deletion of the words added by that amendment-- (A) shall be considered or otherwise given any legal significance, or (B) shall be interpreted to indicate congressional approval or disapproval of, or acquiescence in, any judicial determination, by the courts or the Copyright Office. Paragraph (2) shall be interpreted as if both section 2(a)(1) of the Work Made For Hire and Copyright Corrections Act of 2000 and section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-113, were never enacted, and without regard to any inaction or awareness by the Congress at any time of any judicial determinations.

In short, a work is not a 'work for hire', and the artist retains copyright of that work, specifically unless an artist is (1) an employee creating a work specifically as part of their employment, (2) creating a work specifically upon commission as part of a collective work (various examples given above), or (3) specifically signs a written instrument (contract) agreeing that their creation is a 'work for hire.

Simply because many artists may choose to do so does not in any way reduce the rights of artists who do not.

There is no legal provision under Title 17 that gives Viacom (or anyone else, for that matter) any rights whatsoever to 'step in and claim copyright' of someone else's work, regardless of whether or not the owner of that work may or may not be 'monetizing' that work. Copyright is retained by the copyright holder. Period. Even insofar as it may be 'fair use' to use a work in the

Re:Fair Use

[LordSnooty]

From YT's terms: [youtube.com]

you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website and YouTube's (and its successors' and affiliates') business, including without limitation for promoting and redistributing part or all of the YouTube Website (and derivative works thereof) in any media formats and through any media channels.

They get a license to use your work as they choose, but it's non-exclusive and you retain copyright. There's nothing there which permits use of your clip by any entity other than YT (and its affiliates). It goes on to say YT users are granted a license to stream the video but only from YT themselves.

Re:Fair Use

[aprilsound]

... if you read YouTube's policy you give up all your rights to whatever you upload and they take legal ownership of it. Viacom only needed to ask YouTube (the legal owner of the clip) for permission...

You're just making stuff up. The submitter retains ownership. From the ToS [youtube.com] you claim to be quoting (Section 6):

C. For clarity, you retain all of your ownership rights in your User Submissions. However, by submitting User Submissions to YouTube, you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website and YouTube's (and its successors' and affiliates') business, including without limitation for promoting and redistributing part or all of the YouTube Website (and derivative works thereof) in any media formats and through any media channels. You also hereby grant each user of the YouTube Website a non-exclusive license to access your User Submissions through the Website, and to use, reproduce, distribute, display and perform such User Submissions as permitted through the functionality of the Website and under these Terms of Service. The above licenses granted by you in User Videos terminate within a commercially reasonable time after you remove or delete your User Videos from the YouTube Service. You understand and agree, however, that YouTube may retain, but not display, distribute, or perform, server copies of User Submissions that have been removed or deleted. The above licenses granted by you in User Comments are perpetual and irrevocable.

Re:Fair Use

[Gulthek]

Sad deluded fool. Endor wasn't destroyed immediately, but it was indeed destroyed. Its destruction was even mentioned in the Star Wars books.

Read on, if you dare: Endor Holocaust [theforce.net]

Re:Fair Use

[TubeSteak]

Notice Viacom didn't sue the submitter for copyright infringement, but still got Youtube to take the video down.

The first step in any copyright action is to stop the infringement. You can do this through a DMCA takedown request, a Cease & Desist letter from a lawyer, you can go to court and ask for an injunction, etc etc etc.

Judges don't like it if you sue someone for infringing your copyright & you haven't first tried to mitigate the damages. Hence the DMCA takedown action in this case.

Re:Fair Use

[hoppo]

There doesn't have to be language to specifically permit a certain piece of activity in the terms and conditions. If the term sheet used the words "limited to" your argument might be valid. However, the language of this particular clause pretty much permits YouTube to use your content in any manner they choose if you provide it to them. There are several angles from which YouTube and Viacom are covered:

1. "in connection with the YouTube Website and YouTube's (and its successors' and affiliates') business..." -- if there is an agreement between Viacom and YouTube to run YouTube content on Viacom's "Web Junk" show, the distribution of those works is then in connection with YouTube's business.

2. "including without limitation for promoting... through any media channels" (emphasis added) -- again, this is a valid channel through which the YouTube site can be promoted. Obviously, a show featuring user-generated internet content and giving proper attribution to the content's sources is a promotional arm for those sources.

IANAL, but I have (painstakingly) negotiated the language of several PSAs where ownership and license of the work product were fundamental concepts. Technically, and unfortunately, Viacom's argument is legally quite sound based on the terms of service to which this Knight agreed (although it would seem to me his use of the content from "Web Junk" would qualify as fair use, but I guess that would be for a judge to decide were he to pursue it). Regardless, for Viacom to benefit from something he produced, not provide him any kind of compensation, and then deny him the privilege of sharing his fifteen minutes with his loyal readers just strikes me as being downright non-neighborly.