Bernie and his Marvelous Mittens. It’s all Good Fun Until a Copyright Lawyer Gets Involved
January 28, 2021
By François Larose and Naomi Zener
If you live on Planet Earth and own a smartphone, computer or TV, you have probably already seen the viral meme of Senator Bernie Sanders birthed at the historic 46th U.S. Presidential Inauguration on January 20, 2021 for President Joe Biden and Vice-President Kamala Harris. There, Senator Sanders was unknowingly photographed wearing a winter coat, sitting on a folding chair socially-distanced from the other attendees, with his right leg crossed over left and his hands mirroring the same position adorned in bespoke, now famous, handknit mittens. This image of Senator Sanders was so well-loved that he visited the globe, the Moon and Tatooine, travelled back in time then back to the future, joined the cast of movies and TV shows, hung out in people’s homes, went to sporting events, and was spotted in contexts too innumerable to mention without ever having left the Inauguration. The photographer who captured this image, Brendan Smialowski, a photojournalist for Agence France-Presse (“AFP”), did not set out to be famous with this photograph. He was merely capturing moments of this special day as seen by him through the lens of his camera. By using the Senator Sanders Inauguration image, many people have joined in the fun, turning Senator Sanders into a viral meme given people chuckles for days (and these days we need all the chuckles we can get).
As it turns out, Getty Images licenses this photograph to anyone who wants to pay to use it. Presumably there is an agency agreement between Mr. Smialowski/AFP and Getty Images, and as a result of that contractual relationship, anyone could license the image from Getty Images either under a rights-managed/rights-ready license (a limited license for a specific use) or a royalty-free rights license agreement (which allows the user to use the image as many times/where/when/how as they want without payment of royalties subject to the terms of the content license agreement). However, we have assumed that most of the Senator Sanders and his marvelous mittens memes circulating were made without permission from either Mr. Smialowski, AFP or Getty Images. So, where does that leave the meme-makers who made their meme without express permission to do so from the copyright owner or an exclusive licensee? We can only speak to Canadian laws and consider what legal defences such meme-makers in Canada, were they to receive a cease and desist letter from the rightsholder, who has the authority to enforce the copyright in the image, to stop using the copyright protected image of Senator Sanders, may have1. The Canadian Copyright Act (the “Act”) does provide for two notable exceptions to copyright infringement that may provide said Canadian meme-makers with complete defences to unauthorized use of the Senator Sanders Inauguration image: Fair Dealing and Non-Commercial User Generated Content.
Canada’s Fair Dealing provisions provide exceptions to copyright infringement under specific enumerated categories in section 29 of the Act, which are:
- private study;
- parody or satire;
- criticism or review; or
- news reporting.
Furthermore, a person’s use of another’s copyrighted work must not only fall within one of the above enumerated categories and meet the requirements of the Act, but it must also meet the fairness criteria as set out by the Supreme Court of Canada2, as may be further interpreted by the courts. In the case of a meme-maker, they would likely argue that their use falls under parody or satire, and they would have to prove that the use was in fact fair. For example, a meme-maker may need to ensure that the use of the image was limited to the purpose of creating a meme to be shared on social media without monetizing it.
The other exception is Section 29.21 of the Act. It provides an exception to copyright infringement for the creation of a new work using the already published or made available work of another solely for a non-commercial purpose. This is known as the “user generated content” (“UGC”) exception to copyright infringement. The creator of the UGC must: (a) make the work for non-commercial purposes; (b) attribute the source of the copyrighted work used to create the UGC where it is reasonable in the circumstances to do so; (c) have reasonable grounds to believe the UGC is non-infringing of the copyrighted work; and (d) the use must not have a substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work by the copyright owner. In the case of the Senator Sanders mittens meme, it is possible that the UGC exception under section 29.21 of the Act could apply in cases where meme-makers insert Senator Sanders into all sorts of contexts for non-commercial purposes, provided the UGC does not infringe on someone else’s rights (for example, inserting Senator Sanders in a picture that users took themselves as opposed to famous photos taken by someone else).
Under Canadian law, Senator Sanders’ personality rights would also be at issue in this case, especially in the context of licensing the image from a third party. Under a license where commercial and promotional use is provided for, we presume the licensor would clear the content and image for all uses, if the terms of the license provided for such - for example, the rights could be limited to an editorial (read news or documentary) context where one can’t use it for commercial or promotional purposes and any rights not granted to the licensee are reserved by the licensor, so the licensee would have to clear any and all such rights3. In the foregoing example, a licensee would have to consider whether other items seen in the photo need to be cleared with the rightsholders of those items, including consent from Senator Sanders (if the licensor hadn’t cleared the use) or perhaps even the person who made the mittens, depending on the context in which the image is used under license by the licensee. To do otherwise would not only run afoul of the license with the licensor, but it would also likely violate Senator Sanders’ personality rights under the Canadian common law tort of misappropriation of personality (the relevant privacy legislation varies province-by-province) and the privacy right under Civil Code of Québec. Misappropriation of personality and the privacy right protect a person from having their image or likeness used by another without their permission in association with a commercial purpose, goods, or services, other than the legitimate information of the public (under Quebec civil law). In the context where Senator Sanders authorized the use of his image to be put on a sweatshirt to raise money for social services charities in Vermont, as he has done, there’s no harm nor foul. However, what about all of the industrialist entrepreneurs who, since the Presidential Inauguration, have undertaken a panoply of efforts to create everything from keychains, to mugs and other paraphernalia in between using Mr. Smialowski’s photo and thus profiting from his work and Senator Sander’s image and likeness? Will they get into trouble if they use the image without a proper license? It is quite possible.
Where Senator Sanders and his mittens have been memorialized in crochet and needlepoint and other artistic form closely inspired by Mr. Smialowski’s photograph, they may be considered as derivative works protectable in their own right, but provided that the author had the right by license or exception under the Act to use Mr. Smialowski’s work without permission. As for the mittens themselves, there may be copyright in their design. While Canadian copyright law provides that should 50 or more of a useful article have been made then any copyright in the design would not be enforceable, it is equally possible that they would fall under an exception in paragraphs 64(3)(a) and (c) of the Act that maintain copyright protection to graphic applied to the face of an article or to material that has a woven or knitted pattern or that is suitable for making wearing apparel.
Surely many profiteering from the use of the image without consent will make the free publicity arguments to defend their use. And, so long as Senator Sanders isn’t portrayed in a negative or disparaging manner, he would not likely seek to prevent people from using his image from the Presidential Inauguration without his consent in the context of UGC non-commercial memes. However, please bear in mind that there is no “good publicity” defence to copyright infringement or misappropriation of personality rights or privacy right violations under Canadian law. While in many instances the use(s) of the image are not worth pursuing (or even possible to pursue) -where being penny wise and pound foolish is not the way to go - there may be instances where the rightsholder will want to enforce their rights. Publicity arguments aside, any third party licensee of the image, which profits from its editorial and custom rights licenses may be losing out on money from using the image without a license and may see things differently. While a rightsholder may not pursue creators of non-commercial UGC memes, it may very well go after anyone seeking to use the image for their own commercial and financial gain without having paid for the right to use the image. The bottom line is the mittens are marvelous, the memes are magnificent, but when it comes to profiting from it, it is preferable to consult with a copyright lawyer before using Senator Sanders’ image from the Presidential Inauguration or the copyrighted work or likeness of another person without a license where one is necessary to be obtained for your purposes.
1 Full disclosure, the authors of this article have not reviewed the agreement between Mr. Smialowski/AFP or Getty Images, and presume only that one exists, as to who between them has the authority to enforce the copyright in the image. This article hypothesizes how one could create a meme using a picture without permission of the copyright owner.
2 See CCH Canadian Ltd v Law Society of Upper Canada,  1 SCR 339, 2004 SCC 13: (a) the purpose of the dealing; (b) the character of the dealing; (c) the amount of the dealing; (d) the nature of the work; (e) available alternatives to the dealing; and (f) the effect of the dealing on the work.
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