HBO Wins Copyright Infringement Case Over Graffiti Artist Relying On The De Minimis Copyright Exception

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From Above the Law:

I talk a lot about fair use since it is, without question, the most important limitation and exception in U.S. copyright law, representing a powerful user right. What often doesn’t get enough attention, though, is what is known as the de minimis exception where a court need not go through a full fair use analysis because the amount of the material copied is so small.

HBO recently won a case, Gayle v. Home Box Office, Inc., involving its TV series, Vinyl, a single-season series created by Mick Jagger and Martin Scorsese about a record executive in the 1970s. One episode of the show included a scene of a woman walking down a street in New York City where she passes by a dumpster tagged with graffiti that says “art we all.” The graffiti artist, Itoffee R. Gayle, claims that this depiction violated his copyright and trademark rights. According to his complaint, HBO never tried to contact him or license the graffiti. Of course, as the court agreed, HBO didn’t actually need to try to contact Gayle and no license fee was needed because not all copying is unlawful.

The District Court for the Southern District of New York points out that Gayle must prove unauthorized copying of the work and that the infringing work is substantially similar to his, which requires that the amount taken was more than de minimis. The court notes, “In the copyright arena, de minimis can ‘mean what it means in most legal contexts: a technical violation of a right so trivial that the law will not impose legal consequences,’ or it can mean ‘that copying has occurred to such a trivial extent as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.” In other words, de minimis means just what you think it means.

Looking at the use of the graffiti art in the episode, the court notes that Gayle’s claims “are premised on a fleeting shot of barely visible graffiti painted on what appears to be a dumpster in the background of a single scene” and that the art appears for no more than two to three seconds. Two to three seconds. Of an entire episode. Yup, sounds pretty de minimis to me. The court goes on, noting that the graffiti is not pictured by itself or close-up, plays no role in the plot, and “is hard enough to notice when the video is paused at the critical moment. It is next to impossible to notice when viewing the episode in real time.”

. . . .

While Gayle attempts to argue that HBO intentionally picked this particular piece of graffiti art to use in the background, the court concludes, “HBO’s motive in depicting the graffiti is irrelevant to the de minimis inquiry.” The copying is not actionable, because its use was so small, even if there was a thematic reason for it. For similar reasons, the court also rejects Gayle’s trademark claims.

Link to the rest at Above the Law

PG notes there is a distinction between de minimus use and Fair Use although, logically, they are related.

17 U.S.C. § 107 contains a list of factors which will determine whether the reproduction of a work protected by copyright is or is not fair use. Fair use is an exception to the protections to which the author or creator of a work under copyright law.

In determining whether the use made of a work in any particular case is a fair use under § 107,  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 1961 Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law cites examples of activities that courts have regarded as fair use.  Some of those exceptions are:

  • quotation of excerpts in a review for a scholarly or technical work;
  • for illustration of the author’s observations;
  • use in a parody;
  • use in a news report;
  • reproduction by a library to replace part of a damaged copy; and
  • reproduction of a work in legislative or judicial proceedings or reports.

Elsewhere, the Register of Copyrights cautions, “Courts evaluate fair use claims on a case-by-case basis, and the outcome of any given case depends on a fact-specific inquiry. This means that there is no formula to ensure that a predetermined percentage or amount of a work—or specific number of words, lines, pages, copies—may be used without permission.”

De minimis is a Latin expression meaning “about minimal things”, normally in the locutions de minimis non curat praetor (“The praetor does not concern himself with trifles”) or de minimis non curat lex (“The law does not concern itself with trifles”) a legal doctrine by which a court refuses to consider trifling matters. (Wikipedia, De minimis)

De minimis analysis has been used in a variety of contexts having no relationship to intellectual property. Factor 3 under the Fair Use exception, “the amount and substantiality of the portion used,” would seem to mean something quite similar to de minimis, but courts generally conduct an analysis under all four factors, so a reasonable de minimis defense may be subsumed in considerations of the other three factors.

If PG were king for a day, some time after outlawing war , he would increase the importance of de minimis considerations in the copyright law. Copying a single paragraph from a 300-page book wouldn’t generate a nasty letter from the publisher’s lawyer because it would clearly be de minimis.

For those not cursed with an education in the law, the idea of de minimis exceptions to copyright protection is not difficult to understand and apply. You can pick a leaf from a large tree without harming the tree. The author owns rights to the work he/she creates, but that doesn’t prevent others from using small portions of that work in their own creations.

3 thoughts on “HBO Wins Copyright Infringement Case Over Graffiti Artist Relying On The De Minimis Copyright Exception”

  1. To add insult to perceived injury I’d give him a ticket for vandalising – unless he has written proof of permission to ‘tag’ that dumpster …

  2. Honestly, I don’t think the judge would even go so far as to consider copyright law in the UK. Since graffiti is a crime in the UK the judge would throw the action out in equity. “You must come to equity with clean hands”

  3. Excuse my ignorance, but I’ve never heard of the ‘artist’ in question. I have, however, seen a lot of graffiti. Modern cities are covered in it. Some is beautiful, most is not, but like billboards, street signs, advertising and other forms of external decoration on buildings and objects, it seems to belong to the city itself. Isn’t this the meaning of public domain?

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