Transformative Work Need Not Include Commentary To Be Classified As Transformative Under Copyright Act’s Fair Use Provisions

The Second Circuit Court of Appeals in New York (2nd Circuit) reversed a lower court ruling which applied the wrong standard for determining whether a work was transformative under the Copyright Act’s fair use statute, 17 U.S.C. § 107.  Cariou v. Prince, Case No. 11-1197-cv (2d Cir. April 25, 2013) (available here).  Defendant Prince appealed the decision of the lower court, which found that his artworks did infringe on Plaintiff Cariou’s registered copyrights in certain photographs.  On appeal, the 2nd Circuit held that the lower court had applied the wrong standard and, in applying the correct standard, the Appeals Circuit found that all but five of Prince’s works fell under fair use protection.

In 2002, Plaintiff Cariou published a book of classical portraits and landscape photographs.  In 2007 and 2008, Defendant Prince took several of Cariou’s photographs, altered them, and included them into a series of paintings and collages that he exhibited in Saint Barthelemy (“St. Barth’s”) and at New York’s Gagosian Gallery.  At the Gagosian exhibit, an exhibition catalog containing reproductions of Prince’s paintings was sold.  Prince used Cariou’s photographs in several works, and the amount of each of Cariou’s photographs used varied from work to work.  Cariou sued Prince and Gagosian for copyright infringement and the defendants claimed fair use.  The lower court found in favor of Cariou and entered a permanent injunction against Prince and Gagosian.  On appeal, Prince and Gagosian argued that Prince’s work was transformative and therefore fell under the fair use protection.

Under the Copyright Act, there are several non-exclusive factors to consider in determining whether use of a copyrighted work constitutes fair use.  Per Section 107, the court should consider: “(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 the value of the copyrighted work.”  17 U.S.C. § 107.

The purpose and character factor includes consideration of the the transformative nature of defendant’s use.  The lower court said that Prince’s work would be transformative if it commented on Cariou, his photographs, or aspects of popular culture closely associated with Cariou or his photographs.  The 2nd Circuit disagreed with respect to the commentary component. “Here, our observation of Prince’s artworks themselves convinces us of the transformative nature of all but five, which we discuss separately below. These twenty-five of Prince’s artworks manifest an entirely different aesthetic from Cariou’s photographs. Where Cariou’s serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince’s crude and jarring works, on the other hand, are hectic and provocative.”  Prince, Slip Op. P. 12.

The transformative nature of Prince’s works turns on how his works appear to the reasonable observer.  When comparing Prince’s works with Cariou’s photographs, the 2nd Circuit concluded that 25 of the 30 works were transformative.  However, the Appeals Court noted that cosmetic changes to photographs does not always constitute fair use, because a secondary work can modify an original without being transformative.  Even though Prince’s works were commercial in nature, the 2nd Circuit did not place much significance on that fact because the 25 works were so transformative compared to Cariou’s photos.

As for the effect upon the potential market for Cariou’s photos, the lower court concluded that because a gallery owner decided not to host Cariou’s book at her gallery once she learned of Prince’s exhibit at the Gagosian, that Cariou’s market was adversely effected.  “Contrary to the district court’s conclusion, the application of this factor does not focus principally on the question of damage to Cariou’s derivative market.”  Prince, Slip Op. P. 16.  The focus is whether the secondary use by Prince usurps the market of the original work for Cariou’s photos.  “Prince’s audience is very different from Cariou’s, and there is no evidence that Prince’s work ever touched – much less usurped – either the primary or derivative market for Cariou’s work. There is nothing in the record to suggest that Cariou would ever develop or license secondary uses of his work in the vein of Prince’s artworks. Nor does anything in the record suggest that Prince’s artworks had any impact on the marketing of the photographs.”  Prince, Slip Op. P. 17.

As for the nature of Cariou’s copyrighted works, the 2nd Circuit noted that the photographs were creative and published.  This factor weighed against a finding of fair use, but this “nature of the work” factor was given little weight since Prince’s use was extremely transformative.

As for “the amount and substantiality” factor, that is, the amount and substantiality of Cariou’s works used by Prince in relation to Cariou’s works as a whole, many of Prince’s works used Cariou’s photographs in whole or substantial part.  Sometimes Prince barely altered the original photo but at other times Prince heavily obscuring the copyrighted photo.  However, in 25 of Prince’s works, he transformed Cariou’s photographs into something new and different, thereby weighing the final factor in favor of Prince.  Prince’s use of the photos in these 25 works constituted fair use and non-infringement, and therefore the Gagosian gallery was not liable as a vicarious or contributory infringer.

Per the 2nd Circuit, the remaining 5 artworks did not sufficiently differ from Cariou’s photographs, therefore the Appeals Court remanded the issue back to the trial court stating: “Although the minimal alterations that Prince made in those instances moved the work in a different direction from Cariou’ s classical portraiture and landscape photos, we can not say with certainty at this point whether those artworks present a new expression, meaning, or message.”  Prince, Slip Op. P. 20.  As a result, these 5 works go back to trial.  If the lower court finds that the works fall under the fair use defense, Prince and the Gagosian gallery are not liable.

Quote The Ravens, “Fair Use”

The U.S. District Court in Maryland held that the NFL and Baltimore Ravens’ use of the Ravens’ original team logo was fair use under the Copyright Act, but declined to extend the fair use protection to the Madden NFL videogame’s use of the logo.  Bouchat v. NFL Properties, LLC, et al., Case No. MJG-11-2878 (Dist. Md. 2012); Bouchat v. NFL Enterprises, LLC, et al., Case No. MJG-12-1495 (Dist. Md. 2012); Bouchat v. Baltimore Ravens Limited Partnership, Case No. MJG-12-1905 (Dist. Md. 2012) (available here).  In a litigious history, Frederick E. Bouchat sued over his “Shield Drawing,” for copyright infringement, alleging that the defendants had used a substantially similar design without his permission as the Baltimore Raven’s former logo (“the Flying B Logo”) from 1996 until 1998.  In the prior cases, the NFL and the Ravens were found to have infringed on his copyright but the Court denied his request for an injunction finding that the use was fair use under the Copyright Act, 17 U.S.C. § 107.  Bouchat filed the three current cases alleging copyright infringement of the Shield Drawing due to the NFL’s use of the Flying B Logo in documentary videos (“the Documentary Video Case”), the Ravens’ use of the Flying B Logo in pictures on stadium walls (“the Stadium Wall Pictures Case”), and the NFL and Electronic Arts Inc.’s (“EA”) use of the Flying B Logo in the Madden NFL video game (“the Madden NFL Game Case”).  The defendants filed motions for summary judgment under the fair use defense.

The fair use defense allows people other than the copyright owner to use the copyrighted material in a reasonable matter without the copyright owner’s consent.  The fair use defense has four factors: “(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.” 17 U.S.C. § 107.

In considering the purpose and character of the defendants’ use of the Flying B Logo, the Court applied several subfactors including “the commercial or noncommercial character of the use, the degree to which the use is transformative, the defendant’s good or bad faith, and whether the purpose of the use falls within one of the categories of purposes mentioned in the preamble of section 107.”  Bouchat, Slip Op. Pp. 8-9.  Protected purposes include criticism, news reporting, teaching, and research.  17 U.S.C. § 107.  If the use is commercial, that tends to weigh against a finding of fair use and the test is whether the defendants can gain profit from the exploitation of the Flying B Logo.  A work is transformative if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”  Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).  Finally, the propriety of conduct examines whether the defendants acted in good faith.

The nature of the copyrighted work element “calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.”  Campbell, 510 U.S. 569, 586.  The amount and substantiality used looks at the amount of the copyrighted work the defendant used.  The effect on the market element requires the Court to consider how the defendants’ use of the Flying B Logo will affect the potential market or value of Bouchat’s Shield Design.

The Court started with the Stadium Wall Pictures Case, where the Ravens had photographs documenting important points in the Ravens’ history.  The Court found that the purpose and character of the use of the Flying B Logo by the Ravens was within the fair use defense because, even though a game ticket was required to see the photographs, the pictures are not incentives for people to purchase tickets.  In addition, the use was transformative because the pictures were on display for their factual content documenting the Ravens’ history.  The Court noted that the Ravens’ conduct appeared to be in good faith.  Even though the nature of the use, the fact that the Ravens used the entire work, and the effect on the market for Bouchat’s Shield Design weigh against a finding of fair use, the Court held that the transformative use overcame these factors.  The Court concluded that the Ravens’ use of the Flying B logo in the stadium picture displays constituted fair use.

The Court then considered the NFL’s Documentary Videos Case where the Flying B Logo was used in segments of three documentaries.  The Court found that the purpose and character of the use was fair because the documentaries “use pictures and film clips that show the Flying B Logo selectively as necessary to portray ‘history’ in biographical and comparative presentations[.]” Bouchat, Slip Op P. 25.  The NFL’s use of the Flying B Logo was clearly commercial, however the Court concluded that the use was substantially transformative because each documentary offered commentary, criticism, and documented historical facts.  Thus, the Flying B Logo was used for its factual content.  The Court also found that the NFL’s conduct was in good faith and believed that its use was fair use.  The Court also found that the transformative use of the Flying B Logo outweighed the nature of the use, the amount and substantiality of the use, and the effect upon the market.  As such, the Court concluded that the NFL’s use was fair use.

Finally, the Court turned to The Madden NFL Game, which is released annually.  The Madden NFL Game from 2010 through 2012 have a “throwback uniform” feature, which allows players to select uniforms that teams used in the past.  The Ravens original uniforms with the Flying B Logo was included in this feature.  The Court found that the purpose and character of use was not within the fair use defense.  “Rather, the Game uses the Flying B Logo optionally to augment sales of its product by seeking to profit from the ‘nostalgia value’ gained from use of the infringing work in the very same manner as was the original use.”  Bouchat, Slip Op. P. 30.  The Court found that EA’s use of the Flying B Logo was not transformative.  Looking at the propriety of conduct, the Court stated that there was a question as to whether EA’s conduct was in good faith.  The Court also found that EA’s use of the Flying B Logo affected the market, citing to the nostalgia value, the fact that teams often play games in throwback uniforms, and that many teams offer throwback uniforms for sale.  Even though the throwback uniforms use the Flying B Logo and not the Shield Design, the Court found that because the Flying B Logo has a market that there is also a market for the Shield Design.  As a result, the Court held that EA’s use of the Flying B Logo was not fair use.

“Oh What A Night!” Ed Sullivan’s Charisma Not Enough To Overcome Fair Use Defense For The Jersey Boys’ Use Of A Seven-Second Clip

The Ninth Circuit affirmed the lower court’s summary judgment and award of attorneys’ fees in a copyright infringement case finding that a 7-second clip from The Ed Sullivan Show used in the musical Jersey Boys constituted fair use because of its historical significance.  SOFA Entertainment, Inc. v. Dodger Productions, Inc., Case No. 10-56535 (9th Cir. March 11, 2013) (available here).  The clip was from the introduction of the band the Four Seasons on The Ed Sullivan Show and was used in the Jersey Boys musical about the Four Seasons.  SOFA owns the copyrights to the entire Ed Sullivan Show, including the clip in which Ed Sullivan introduces the Four Seasons.  Dodger produced the musical Jersey Boys, which is a historical dramatization about the Four Seasons.  The clip portrayed Ed Sullivan in his “signature pose” introducing the Four Seasons to his studio and television audiences.

SOFA Entertainment, Inc. (“SOFA”) sued Dodger Productions, Inc. (“Dodger”) alleging copyright infringement.  Dodger argued that the use constituted fair use under the U.S. Copyright Act (17 U.S.C. § 107).  Both parties moved for summary judgment and the lower court granted it in favor of Dodger.  The lower court then awarded Dodger attorneys’ fees and costs, finding SOFA’s lawsuit unreasonable.  SOFA appealed.  The Ninth Circuit affirmed.  “By using the clip for its biographical significance, Dodger has imbued it with new meaning and did so without usurping whatever demand there is for the original clip.”  SOFA, Slip Op. P. 3.

The fair use doctrine allows the use of copyrighted works without the permission of the copyright owner for purposes such as criticism, comment, news reporting, teaching, or research.  The Copyright Act lists four factors to aid courts in their fair use analysis: “(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.”  17 U.S.C. § 107.

In analyzing the purpose and character of the use, the Ninth Circuit noted that Dodger’s use of the Ed Sullivan clip was to mark an important moment in the Four Season’s career as a band.  “At that point in rock & roll history, many American bands were pushed into obscurity by the weight of the “British Invasion,” which was kicked off by the Beatles’ performance on The Ed Sullivan Show. The Four Seasons, however, thrived. Being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music.”  SOFA, Slip Op. P. 9.  As a result, even though Jersey Boys is a commercial production, Dodger transformed the clip by citing to its historical significance and therefore met the first prong of the fair use test.

In looking at the nature of the Ed Sullivan clip, the Ninth Circuit stated that “[a]n alleged infringer will have a more difficult time establishing fair use when he appropriates a work [creative in nature]. While the entire episode of The Ed Sullivan Show or the individual performances may be near to the core of copyright, the clip conveys mainly factual information – who was about to perform. Therefore, the second factor also favors Dodger.”  SOFA, Slip Op. P. 9.

For the third prong, SOFA did not challenge the conclusion that the 7-second clip was insignificant compared to the length of an Ed Sullivan episode, but argued that Dodger attempted to capitalize on the favorite part of the Ed Sullivan Show, when Ed would introduce the bands.  However, the Ninth Circuit rejected this argument for two reasons.  First, the 7-second clip is not qualitatively significant because Ed Sullivan simply identifies the Four Seasons and it is unlikely that the clip would be copyrightable on its own.  Second, SOFA was incorrect in arguing that Ed Sullivan’s signature pose and style are copyrightable because, while movements and intonations are elements that can be protected, SOFA sought to protect Sullivan’s personality as well.  “Charisma, however, is not copyrightable.”  SOFA, Slip Op. P. 10.

Finally, in examining Dodger’s use of the clip on the market for the Ed Sullivan Show, the Ninth Circuit concluded that the factor weighed in favor of Dodger.  When the use is not a substitute for the original and allows the copyright holder a derivative use, the factor weighs in favor of fair use.  “Jersey Boys is not a substitute for The Ed Sullivan Show. The clip is seven seconds long and only appears once in the play. Dodger does not reproduce Jersey Boys on videotape or DVD, which would allow for repeated viewing of the clip. Dodger’s use of the clip advances its own original creation without any reasonable threat to SOFA’s business model.”  SOFA, Slip Op. P. 11.

Turning to attorneys’ fees, the Ninth Circuit found that an award of attorneys’ fees would further the purpose of the Copyright Act, which is to “encourage the production of original literary, artistic, and musical expression for the good of the public.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 524 (1994).  The Ninth Circuit affirmed the summary judgment in favor of Dodger under the fair use doctrine and affirmed the award of attorneys’ fees.