Greater Richmond Intellectual Property Law Association

January 28, 2016 Stephen P. Demm

The Copyright Owner’s Bundle of Exclusive Rights Subject to Sections 107 through 122, the owner of copyright

. . . has the exclusive rights . . .:

1. to reproduce the copyrighted work . . .; 2. to prepare derivative works; 3. to distribute copies . . . of the copyrighted work . . .; 4. . . . to perform the copyrighted work publicly; 5. . . . to display the copyrighted work publicly; 6. in the case of sound recordings, to perform the

copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. § 106

Fair Use Defense – Common Law Folsom v. Story, 9 Fed. Cas. 342 (CCD Mass. 1841)

Plaintiff authored 12-volume biography of George Washington

Defendant used plaintiff ’s 12-volume biography to write 2-volume biography of Washington

Decided under Copyright Revision Act of 1831 Exclusive copyright rights in books limited to printing,

reprinting, publishing, and vending books as originally printed

No exclusive rights re: derivative works – translation, dramatization, abridgment

Fair Use Defense – Common Law Justice Story articulates “fair use” defense:

“The entirety of the copyright is the property of the author; and it is no defence, that another person has appropriated a part, and not the whole, of any property. Neither does it necessarily depend upon the quantity taken, whether it is an infringement of the copyright or not. It is often affected by other considerations, the value of the materials taken, and the importance of it to the sale of the original work.” (emphasis added)

Fair Use Defense – Common Law Justice Story’s “fair use” defense as alternative to

“abridgment defense.”

Intended to expand copyright owners’ rights and limit defendants’ rights.

Codification of Fair Use Defense Section 107 of Copyright Act of 1976:

Preamble – “Notwithstanding the provisions of

section[] 106 . . ., the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”

17 U.S.C. § 107

Codification of Fair Use Defense Four-factor test:

In determining whether the use made of a work in any particular case is a fair use the factors 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. 17 U.S.C. § 107

First Fair Use Factor Purpose and Character of Use

Commercial vs. nonprofit educational

Commercial use presumptively unfair?

Many uses have commercial aspects but also educational, communicative, related to public discourse

Second Fair Use Factor Nature of Copyrighted Work

Factual vs. expressive/creative work.

Photographs?

Third Fair Use Factor Amount and Substantiality of Portion Used

Comparison is to plaintiff ’s copyrighted work as a whole,

not defendant’s allegedly infringing work as a whole. But qualitative rather than quantitative analysis. 11th Cir. criticized District Court for “bright line” test in fair

use case re: copying of materials for non-profit use of university: 10 chapters or more: up to 1 chapter could be used fairly Less than 10 chapters: 10% could be used fairly Cambridge Univ. Press v. Patton, 769 F.3d 1232 (11th Cir. 2014)

Fourth Fair Use Factor Effect on Market/Value

Actual or potential market

Actual or potential value

An Imprecise Test Four factors must be applied, but: “an open-ended and context-sensitive inquiry”

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)

Lots of play in the factors

No direction on how to balance factors

Factors not exclusive

No bright lines – quantity taken not dispositive

Case-by-case analysis

Benefits of Imprecise Fair Use Test Flexibility to respond to changing technology.

Permits and requires courts “to avoid rigid application of

the copyright statutes when, on occasion, it would stifle the very creativity which that law is designed to foster.”

Stewart vs. Abend, 495 U.S. 207 (1990)

Safety valve for copyright balancing (Copyright Clause): “To promote the Progress of Science and useful Arts, by

securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

U.S. Constitution Article I, Section 8, Clause 8

Criticism of Imprecise Fair Use Test

“the most troublesome [issue] in the whole law of copyright”

Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 662 (2d Cir. 1939)

“ad hoc, fact-oriented, allegedly completely equitable in nature, and dependent on a shadowy weighing of vague factors, to say nothing of the luck of the draw in the decisionmaker.”

The Patry Copyright Blog, Barton Beebe’s Fair Use Study (May 11, 2007)

Criticism of Imprecise Fair Use Test “Our statute and judge-made law talk around the subject. They mention factors, but give no standard. And those factors are stated in an opaque and uninformative way.”

Judge Pierre N. Leval, Fair Use or Foul? The Nineteenth Donald C. Brace Memorial Lecture (April 25, 1989)

Criticism of Fair Use is Criticism of Copyright Balancing Itself “The ultimate test of fair use . . . is whether the copyright law’s goal of ‘promoting the Progress of Science and useful Arts’ . . . would be better served by allowing the use than by preventing it.”

Cariou v. Prince, 714 F.3d 694 (2d Cir.), cert. denied, 134 S. Ct. 618 (2013) (quoting Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132 (2d Cir. 1998))

Practical Disadvantages of Imprecise Fair Use Test Uncertainty and risk for prospective users of

copyrighted works

Even successful fair use defense may have to wait until summary judgment

But see Galvin v. Illinois Republican Party, 2015 WL 5304625 (N.D. Ill Sept. 9, 2015) (unauthorized use of photo in political campaign was fair use; motion to dismiss granted)\

Chilling effects

Former Fair Use Guideposts Former guideposts that provided some predictability in fair use analysis: 1st factor: “every commercial use of copyrighted

material is presumptively . . . unfair” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984)

4th factor: market harm “is undoubtedly the single most important element of fair use”

Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566 (1985)

Transformativeness – Judge Leval 1st factor (purpose and character of use): “I believe the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose than the original.” criticizing original work exposing character of original work’s author proving a fact summarizing idea in original work to defend or rebut it parody symbolism

Judge Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. Law Rev. 1105, 1111 (March 1990)

Transformativeness – Campbell Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) Roy Orbison rock ballad “Oh, Pretty Woman”

2 Live Crew rap song “Pretty Woman”

2 Live Crew song was commercial, but was parody and

could be fair use.

2 Live Crew song did refer back to and comment on Orbison song: “clearly intended to ridicule the white-bread original”

Transformativeness – Campbell 1st factor (purpose and character of use): “[W]hether the new work merely ‘supersede[s] the objects’ of the original creation . . . or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; . . . in other words, whether and to what extent the new work is ‘transformative.’ . . . Although such transformative use is not absolutely necessary for a finding of fair use, . . . the goal of copyright . . . is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright, . . . the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

Transformativeness – Cariou v. Prince Cariou v. Prince, 714 F.3d 694 (2d Cir.), cert denied, 134 S. Ct. 618 (2013) Plaintiff Patrick Cariou - Professional photographer

Yes, Rasta photographic art book

6 years in Jamaica Black and white photos of Rastafarians and Jamaican

landscapes “extreme classical photography [and] portraiture” “did not ‘want that book to look pop culture at all” 5,791 copies sold; ˜ $340,000 total revenue; $8,000 to Cariou

Transformativeness – Cariou v. Prince Defendant Richard Prince - Appropriation artist Used Cariou’s Yes, Rasta photos in his Canal Zone series -

30 large paintings Tore Cariou’s photos from 4 copies of book and altered

them “Lozenges” over subjects’ faces Affixing headshots from photos onto other images from

different sources Enlarging and tinting photos Adding paint and other elements (images of nude women)

8 paintings sold for ˜ $10.5 million; 7 others traded ($6-8 million)

Transformativeness – Cariou v. Prince Yes, Rasta “Graduation”

Transformativeness – Cariou v. Prince – Yes, Rasta

Transformativeness – Cariou v. Prince – “James Brown Disco Party”

Transformativeness – Cariou v. Prince District Court Decision: Cariou v. Prince, 784 F. Supp. 2d 337 (S.D.N.Y. 2011) Summary judgment for Cariou

Rejected Prince’s fair use defense

Prince’s use of Cariou’s photographs not transformative, and not fair use

Prince’s paintings did not comment on or refer back to Cariou’s photographs or their historical context

Prince’s deposition testimony: no interest in meaning of Cariou’s photos; no intent to comment on them

Injunctive relief – all infringing copies to be “deliver[ed] up for impounding, destruction, or other disposition as [Cariou] determines”

Transformativeness – Cariou v. Prince

2d Circuit Reversal of S.D.N.Y. and partial remand Transformativeness To be transformative and qualify as fair use, Prince’s paintings need not parody or comment

on Cariou’s photographs or their historical context

Could be transformative as long as they altered Cariou’s photographs with some “new expression, meaning, or message.”

Tried to distinguish permitted transformative fair use from infringing derivative works: “a derivative work that merely presents the same material but in a new form, such as a book of synopses of television shows, is not transformative.”

Little weight to Prince’s statements that he did not intend his paintings to comment on Cariou’s photos “What is critical is how the work in question appears to the reasonable observer, not

simply what an artist might say about a particular piece or body of work.”

Transformativeness – Cariou v. Prince 2d Circuit compared Cariou’s photos and Prince’s 30 paintings “side-by-side” 25 paintings transformative (fair use as a matter of law)

Differences in aesthetics: “serene and deliberately composed portraits and landscape

photographs depict[ing] the natural beauty of Rastafarians and their surrounding environs,” vs. “crude and jarring” and “hectic and provocative”

“black-and-white-photographs . . . 9 ½” x 12” book,” vs. “collages on canvas that incorporate color . . . between ten and nearly a hundred times the size of the photographs.”

5 paintings aesthetically closer (remand) maintained “pastoral” backgrounds and “lush greenery” of photos

Transformativeness – Cariou v. Prince Transformativeness informed 2d Cir.’s analysis of fair use factors: 1st – Most Prince paintings “transformative”; also commercial, but

little weight to that given the “transformativeness” 2nd – Cariou’s photos published but creative; weighed against fair

use 3rd – Disagreed with D. Ct. finding that Prince’s “taking was

substantially greater than necessary”; 25 transformative enough that this strongly favored fair use; 5 others remanded

4th - Weighs against fair use only if secondary use “usurps the market of the original work”; no evidence Cariou would develop/license secondary uses for Yes, Rasta photos like Prince’s artworks

Transformativeness – Cariou v. Prince Aftermath of 2d Circuit Decision S. Ct. denied Cariou’s cert. petition Remand on 5 paintings

Prince testimony on transformativeness Reasonable observer test for transformativeness

Expert witnesses from art world Surveys

Amicus briefs - Confidential settlement

New Case against Prince Graham v. Prince, No. 1:15-cv-10160 (S.D.N.Y. Dec. 30, 2015) Plaintiff Graham

Fine art photographer and commercial photographer

Artwork exhibited in museums and fine art galleries

Graham’s “Rastafarian Smoking a Joint”

Graham’s “Rastafarian Smoking a Joint” Graham spent 2 weeks in Jamaica, photographing

Rastafarians

Graham sells prints of photo at issue through A. Galerie (Paris) in limited editions, 4’ x 5’ and 20” x 24”

Graham displays photo on his website

Prince’s “New Portraits” Work

Prince’s “New Portraits” Work

Third party reproduced Graham’s photo on social media website (without permission)

Prince reproduced photo from social media website

Prince’s “New Portraits” Work Prince’s modifications to photo Cropping of top and bottom Framing with elements of Instagram GUI Resizing photo (4’3/4” x 5’53/4”) Thumbnail and text “comments” above and below

Prince: “What’s it mean? I don’t know. Does it have to mean anything at all?”

37 inkjet prints on canvas Exhibited at Madison Gallery (New York)

Implications of Cariou v. Prince? Ascendancy of transformativeness Expansion of fair use defense via expansion of

transformativeness No need to comment on copyrighted work Adding some “new expression, meaning, or message”

sufficient, even if entire work taken. But how much? Reasonable observer test

Judges ruling on art, aesthetics; expert testimony; surveys; authors’ intent?

Usurping potential market for plaintiff ’s work – evidence? But change in context alone not enough Limited to appropriation art?

Digitization/Aggregation/Search Authors Guild, Inc. v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (Leval, J.) Plaintiffs – Authors of published books still protected

by copyright (including Jim Bouton) Google Library Project and Google Books Project

Digital copies of 20 million+ books for online library Books scanned (copied) in their entireties Free public search function

search terms “snippets” of text where search terms appear

Authors Guild v. Google 2d Circuit affirms summary judgment finding Google’s

Library/Book Projects to be fair use Highly transformative

Search feature adds something new, with a different purpose or character

Allows users to identify books that do/do not have certain terms

Provides statistical information about frequency of word use Provides information about books not available from books

themselves Allows “text mining,” “data mining”

Authors Guild v. Google Transformativeness informed analysis of fair use factors 1st factor – Although entire books copied, search function and snippet view

highly transformative – allows research for terms of interest and books of interest – commercial purpose doesn’t outweigh transformative purpose, esp. given that they don’t offer competing substitute for plaintiffs’ books

2nd factor – Whether plaintiffs’ works are factual or creative rarely dispositive. Favors fair use not because some of plaintiffs’ books factual, but because Google’s transformative use doesn’t provide meaningful substitute for original

3rd factor – Google’s copying entire books not dispositive because necessary and because only snippets provided to users

4th factor – Snippets of author’s book unlikely to “provide a significant substitute for the purchase of the author’s book” – may spur sales, interest

Authors Guild v. Google Authors Guild cert. petition to S. Ct. 2d Circuit decision at odds with 7th and 11th Circuits’

treatment of transformativeness? “threatens copyright protection in the digital age” “fundamentally remakes the fair-use doctrine by

eliminating any focus on whether the use involves the creation of new expression, meaning, or message”

“empowers judges to approve any reuse of copyrighted works that those judges deem socially beneficial”

“We’re not asking for Google Books to be shut down. All we’re asking is for authors to be compensated.”

Where Has Transformativeness Left Us? Streamlined fair use test? Made fair use defense more predictable? Better achieved the balance in Copyright Clause – incentive

for creators vs. freedom to use copyrighted works? Social value in transformative uses of copyrighted works Transformative uses probably don’t substitute for copyrighted

works But defendants that use entire copyrighted works benefit

Should copyright owners share in benefit?

Injunctive relief/damages remedy?