The Chilling Effects of a JibJab Cease and Desist

I can hardly believe this, but JibJab, the folks who fought so hard for their fair use rights when they put out their "This Land" video, sent a cease and desist letter to The Black Lantern, who had used a few seconds of the "This Land" video in making a video paired with The Legendary KO's mp3 "George Bush Doesn't Care About Black People." There's a lot of layers of mash-up here, so let's take this step by step.

During the 2004 election campaign, JibJab made an animated short video that spoofed both candidates, set to the old tune of (and using some of the lyrics from) Woody Guthrie's "This Land is My Land."

Ludlow Music, Inc., purported rights owner in Woody Guthrie's "This Land is My Land," threatened JibJab with cease and desist letters claiming copyright infringement and seeking to halt distribution of the video.

EFF took up JibJab's defense and uncovered embarrassing facts for Ludlow, such as that Guthrie himself was very accomodating towards those who wanted to sing or modify his songs, that Guthrie had lifted the tune almost completely from an old Carter Family song, and that due to a tardy renewal, the song had entered the public domain.

JibJab was allowed to continue distributing its video.

Skip ahead to 2005 and Kanye West has a popular song out entitled "Gold Digger."

In the aftermath of Hurrican Katrina, Kanye West criticized President Bush on NBC during a live benefit concert, saying among other things, "George Bush doesn't care about black people."

Gold Digger was remixed by The Legendary KO, with altered words by Big Mon and Damien a/k/a Dem Knock-Out Boyz. The remix was entitled: "George Bush Doesn't Care About Black People." The mp3 swept the internet.

The Black Lantern mashed together video clips from the Katrina aftermath, West's Gold Digger video, and other footage of President Bush, pairing it with the Legendary KO's remixed song, making essentially a music video for the remixed song. The video took the already-powerful song to a new level of political critique and started circulating on the internet.

The original version of The Black Lantern's video contained about four snips from Jib Jab's "This Land" video, totaling about nine seconds. (Precise details below).

The Legendary KO, who remixed the song, learned of video efforts like The Black Lantern's and wrote on his website, "While the videos themselves represent the visions of their respective editors and not necessarily The Legendary KO, we encourage you to share them with others in hopes that they might bring more attention to the situation in the Gulf Coast." Here, one mashup artist saw that another had "already started to pick up where we left off..." and implicitly sanctioned the follow-on creativity.

But on September 29, JibJab had attorneys with Goldring, Hertz & Lichtenstein, L.L.P. send The Black Lantern a cease and desist letter. (I have seen the letter but have been asked not to distribute it.) Jib Jab claimed copyright infringement, but also seemed to emphasize that due to "the highly partisan nature of the [Black Lantern] Video" the use of clips from "This Land" mistakenly conveyed "a message to the public that JibJab endorsed the political message of the Video and authorized [Black Lantern's] use of the infringing material."

The Black Lantern took the video down from 9/29 until 10/4 when the approximately 9 seconds of JibJab footage had been replaced with alternate video. The Black Lantern also spoke to one of the JibJab brothers and their attorneys on the phone to verify that no further legal action would be taken if the clips were removed.

The new version of the video still packs a powerful message, but obviously if everyone threatens you to remove their 9 seconds or face litigation, then it doesn't take long before you don't have a video anymore. Additionally, nearly a week passed when The Black Lantern couldn't distribute the video's message. When one speaks about current events, every day is preciously relevant, because as time passes our attention is directed to other things.

Let's step back from a debate about the legality of the remixed song by The Legendary KO, or the use of the Kanye West video clips by The Black Lantern and focus first on this question: Was The Black Lantern's use of the 9 seconds of "This Land" clips a fair use under U.S. Copyright law?

The answer is almost certainly: Yes.

17 U.S.C. 107 provides that "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." No one factor is determinative and other relevant factors may be considered.

Factor 1: Purpose and character of the use.
The Black Lantern provides this video for free from his website. It is licensed under a Creative Commons Attribution, Non-Commercial, Share Alike license. Currently the only "ad" on his site is a small Red Cross Donation banner. The purpose of the use of the JibJab clips was expressive and transformative speech. The character of the use was non-commercial political expression. This factor weighs in favor of The Black Lantern.

Factor 2: The nature of the copyrighted work.
The relevant copyrighted work here is the JibJab animated short. JibJab does hold a registered copyright in the short and its registration was attached to the cease and desist letter they sent. That registration is informative here, for it was amended by the Copyright Office to note in the "Derivative Work" section of the Copyright Registration that JibJab's "This Land" "contains previously published music and photographs." That is, the Copyright Office wanted to note what is obvious to any viewer of the short, that "This Land" builds on the creativity of others. Without Woody Guthrie (or the Carter Family) and without the various photographs of political figures made by others, JibJab could not have made "This Land" quite the way they did. The Black Lantern is also building on the work of others, but somehow JibJab feels they should own the market for derivative works.

Nonetheless, an evaluation of this factor more properly notes that JibJab's copyrighted work is a work of creative expression which is generally given greater protection than say a mere compilation of facts. So, this factor slightly favors JibJab, with the ironic proviso noted above.

Factor 3: The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
JibJab's "This Land", not counting the end credits, is about 2 minutes and 20 seconds long. The Black Lantern used several non-sequential clips from "This Land" that totaled about 9 seconds in length. Most JibJab clips used were on screen for a single second or two, with the longest clip lasting a little under 4 seconds. The amount used is therefore both miniscule in itself and amounts to less than 5% of the whole work. The portions used were primarily comic images of Bush, and could not be characterized as "the heart of the work" or somehow more substantial than other portions of "This Land". The clips were interspersed in The Black Lantern's video beginning at 0:38, 2:17, 2:46, and 3:51. The clips used make up an even smaller percentage of the four minute and nine second Black Lantern video than they do of "This Land." This factor weighs in favor of The Black Lantern.

Factor 4: The effect of the use upon the potential market for or value of the copyrighted work.
JibJab always distributed "This Land" over the internet at no cost to downloaders and still provides it this way today. The primary value of the work is its ability to drive people to JibJab's website where they can be forced to watch advertisements prior to watching "This Land." The Black Lantern's use of these clips does nothing to harm the potential market for or value of "This Land." Indeed, to the extent that it reminded viewers of a video they had probably not thought about for over a year, The Black Lantern's use was more likely to have a positive effect on the value of "This Land" to JibJab. These spread-out nine seconds of "This Land" did not serve as a market substitute for "This Land" as no one who hoped to enjoy the comedic aspects of "This Land" could reasonably choose The Black Lantern's powerfully saddening video instead. This factor also favors The Black Lantern.

Other relevant factors: Political speech warrants special First Amendment protection.
JibJab was right about one thing: The Black Lantern's video conveys a political message. Copyright law is always in tension with the First Amendment for Copyright law expressly prohibits certain expression, while the First Amendment demands that Congress make no law abridging the freedom of speech. Congress has resolved this dilemma by building into copyright law the free speech safety valve of fair use. Subject to the factors discussed above, fair use permits the use of copyrighted material without permission of the creator, precisely in order to guarantee the free speech of the fair user required by the First Amendment and to foster discussion that itself promotes progress (as copyright law itself is also required to do). Political speech is the very heart of the speech intended to be protected by the First Amendment. We formed a Republic where we were guaranteed the right to critique our political leaders. Without that we have fallen short of the promise of securing to ourselves the blessings of liberty.

Moreover, nothing about a fair use of a copyrighted work conveys any approval or disapproval of the original author. Fair use is explicitly a no-permission-required system. JibJab can wring its hands that someone might think The Black Lantern sought and received permission to use JibJab clips and that consequently JibJab implicitly supports The Black Lantern's political message, but that's all their allowed to do: wring their hands. When our fair use system is working properly everyone knows The Black Lantern didn't need and didn't ask for permission and consequently they make no inferences about JibJab. It is only overbearing cease and desist letters like the one JibJab sent that help to create a climate where people might begin to assume that any footage they see used in any video they find on the internet must have been licensed by the creator, who must consequently approve of any political messages contained therein. So, a consideration of the political nature of The Black Lantern's speech also weighs in favor of a finding of fair use.

The most shameful part of all this is:

1) JibJab should have known better. They know fair use. They rely on fair use every day.
2) Goldring, Hertz & Lichtenstein, L.L.P., JibJab's attorneys in this matter, should have known better. They too know fair use (and otherwise seem like decent folks) and should have told their client these claims were baseless and harmful to JibJab's own interests, in both the short and long term. JibJab was getting much better fair use advice when EFF was providing it.

As always:
IANAL: I am not a lawyer.
TINLA: This is not legal advice.
YANMC: You are not my client.

Posted by Brian W. Carver at October 09, 2005 12:25 AM | TrackBack