Wednesday, May 29, 2013

5.30.13 BEER WARS

This article originally appeared in the 5.30.13 issue of Metroland.

The internet blowed up real good last week over a dispute between Vermont’s Magic Hat brewery and West Sixth Brewing Company, a small brewery in Lexington, Kentucky.  Seems that about a year ago West Sixth started bottling brewskis that it called “6”.  The label for 6 featured the number 6 in a very stylized font along with a little cartoon star.  Magic Hat has for years been selling its “#9” beer, with the vaguely psychedelic labels we’ve all seen... using virtually the same stylized font and an extremely similar cartoon star.

            A bunch of you forwarded to me a West Sixth webpage entitled “No More Magic Hat” where the Kentucky brewery is squealing like a stuck pig about being “bullied” by Magic Hat over the 6 logo.  This went seriously viral, with a Facebook page, a petition, Magic Hat getting bombed with emails, and various blogs and other commentators (including many I respect and admire) uniformly condemning Magic Hat for being some kind of corporate monster.

            I smelled a rat.  I’ve spent a good bit of my career dealing with corporate IP bullies on behalf of real victims, real little guys, real Davids taking on real Goliaths.  And something didn’t feel right about all of this.

            In a parlance that could be described as “forced breezy”, West Sixth claims on its website that an “enemy” is trying to “force us out of business by the filing of a silly and frivolous lawsuit.” Magic Hat is painted as an arm of some “international conglomerate” while West Sixth is portrayed as a teeny-tiny little neighborhood start-up.  And this big bad Magic Hat only has a registered trademark for the number nine and now they’re saying it’s the same as a six!  And Magic Hat has got “fancy New York lawyers.” And how can you help this poor, beleaguered company?  Buy their beer!  Sign a petition!  C’mon people, let’s get faced and fight the power!

            It all made me a little queasy.  A little too slick.  The passive aggressiveness was palpable.  And, as it turns out, it was deceptive as hell.

            Let’s start with the West Sixth webpage.  The brewery refers to itself as a “socially conscious craft brewery.”  Does that strike you as a little self-congratulatory?  I mean, if you have to say that you’re “socially conscious” at the top of your corporate statement (West Sixth strangely doesn’t include the “LLC” that’s part of its real name anywhere on its website), I’m thinking you may be trying a little too hard to be groovy.

            Magic Hat is, in fact, still a Vermont-based LLC and its brewery is still in Vermont, but it’s apparently now owned by a much larger corporation.   And yes, Magic Hat has registered only the simple trademark “#9”, but its labels are extremely distinctive and are protected at common law.  So West Sixth’s main argument, jumping up and down and yelling that a 6 is different than a 9, is totally bullshit.  I’d like West Sixth to answer these questions: Why the same font?  Why the same star?  Why the same colors on the labels? These are coincidences?  Really? 

            All of West Sixth’s anti-corporate nonsense obscured the fact that it’s not an innocent here.  It also played loose with the facts of how we all got here.  To quote Tom Verlaine: "I knew it must been some big set-up."

            Lawyers for Magic Hat contacted West Sixth last September complaining about the logo.  And they weren’t “fancy New York lawyers.”  It was Harter, Secrest and Emery, from Rochester, NY.  They also have an office in Albany.  Maybe one of their lawyers wrote your will or incorporated your business.   They’re a fine, completely unfancy upstate law firm.  West Sixth, in turn, responded through the law firm of Stites & Harbison, one of the oldest law firms in the country, with 260 lawyers working in eight offices around the South.  For a couple of months the lawyers went back and forth, and seemed very close to settling the case. West Sixth agreed to change its logo so it was less confusing.   Then West Sixth reneged on some of its concessions and told Magic Hat that it would create a public relations nightmare if a lawsuit started.  So Magic Hat sued.  Using attorneys from Nashville, Tennessee.

            I don’t know if Magic Hat has got a great case, but I think they’ve got a good one.  There’s allegations that West Sixth was well aware their logo looked a lot like Magic Hat’s from the git-go, and the fact is if they didn’t, they’re as stupid then as they are disingenuous now.

            Magic Hat has now amended their complaint and asked the court to enjoin West Sixth from continuing its publicity campaign to ruin Magic Hat’s reputation, which is worrisome because it gets into free speech, robust criticism, all that stuff.    I think Magic Hat has been smeared, but I really don’t want a federal court issuing orders stopping anyone from saying something before they say it.

            It’s a mess, but it’s not what everybody seems to think it is.

Paul Rapp is an IP attorney and avid consumer of liquids who is going to buy a sixer of Magic Hat #9 this weekend and drink it like the fancy lawyer he is.




Wednesday, May 01, 2013


This article originally appeared in the 5.2.13 issue of Metroland.

            The New York federal appeals court issued its decision in the Cariou v. Prince case last week, and it’s a gooder.  The case involves famed (or perhaps infamed) appropriation artist Richard Prince’s series of manipulated images using Philip Cariou's photographs of Rastafarians, all done without Cariou’s permission. 

            A district court last year ruled that Prince had infringed on Cariou’s works, finding both Prince and his gallery liable for infringement, ordering the infringing works to be impounded, and scheduling a hearing to determine damages and an award of attorneys’ fees.  The court ruled on these things as a matter of law, that is, that the issues were so clear there was no need to send any questions to trial. This ruling sent considerable fear and loathing through the art world. If allowed to stand, this broad and brutal decision would render appropriation art, arguably the most significant art movement of the last 100 years, an endangered species.

            In a stunning rebuke, the appeals court reversed the ruling, and held that all but five of the thirty Prince works were, as a matter of law, protected from any claims of infringement by the fair use doctrine, and instructed to trial court to determine (using the right standards this time) whether the other five works were infringing.  The appellate court cleared up a number of things that have made navigating fair use so treacherous for so long.

            The court reminded the world that copyright law exists not to protect creators, but for the betterment of society, that too strong copyright protection can work against that goal, and that fair use protects our right to express ourselves by referencing the works of others.  Then the court lowered the boom.

            Citing some old and largely discredited caselaw, the lower court had ruled that Prince’s works could not be fair use because they did not make any comment or criticism about the appropriated Cariou photographs. The appellate court announced bluntly that no such requirement exists, and that fair use can be found if a new work simply provides a “new expression, meaning, or message,” regardless of whether it comments upon or parodies the original work.

            Then the court tackled the thorny issue that Prince, ever the provocateur, had testified in depositions that he “doesn’t really have a message” and that he “wasn’t trying to create anything with a new meaning or a new message.”  (Prince’s deposition transcript is available online, and throughout it appears that he’s enjoying being deposed more than any litigant in the history of litigation, and succeeds, over hundreds of pages, in saying almost nothing.)  The court noted that most artists in his position would fall over themselves trying to explain the transformative nature of his or her work, but Prince didn't, and the fact that Prince refused to do so didn’t matter.  What mattered was whether new meaning could be reasonably perceived. The court announced that it perceived it and held that 25 of the works were of a completely different character and employed different esthetics than Cariou’s photographs.  Fair use, bitches! Boom!

            The court then admonished the lower court for making way too big of a deal over the fact that Prince aimed to make money from his work, noting that for almost twenty years the commercial nature of a work was usually not a very important fair use factor.  Everybody tries to make money with their work.  That's how they eat.
            Then, noting that the lower court had held that Prince took more of Cariou’s work that was “necessary”, the appellate court said “[w]e are not clear as to how the district court could arrive at such a conclusion. In any event, the law does not require that the secondary artist may take no more than is necessary.”   Wow! Down goes Frazier!

            Finally, the court focused on the five works it was sending back to the district court.  These are the works you may have seen in the press, Cariou’s photos with blue blotches (referred to in the decision, oddly, as “lozenges”) over the Rasta faces and some crude cutting and pasting, like putting a Stratocaster in a Rasta’s hands.

            The court ruminated on the similarities and differences between Prince’s works and the Cariou photographs, and decided,  rather strangely, that the district court (which had created such an incredible mess in the first place) was somehow “better situated” to decide whether these were fair uses or not.   I think the legal term for this is "punt".  This probably means a trial, if this thing doesn’t settle.  That’ll be some fun.

           This is a really important decision that opens the fair use door wider than it’s ever been and provides collagists and appropriation artists of all types greater confidence to follow their muses without fear of getting sued by some jerk with Lotto fever.  Hopefully, these big general fair use ideas will finally carry over to musical works, where a couple bad decisions and a whole lot of record industry money has, for over 20 years, stifled the free use of sampling in new recordings.  I think that’s about to change.

Paul Rapp is an entertainment attorney in Western MA who’s going to the drive-in tonight and plans to fog up the windows for the “coming-soons”.