Copyright Law Blog: Exclusive Rights

Category Archives: Fair Use

Fair use cannot be raised sua sponte, 11th Cir.

Shourin Sen - 6 April 2010 – 9:00 am

Filed under Derivative Work, Fair Use, Noncopyrightable Material, Useful Article

Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. 2010)

The facts of this case are somewhat convoluted. Kawasaki engaged a motorcycle shop to customize two ZX-14 motorcycles for use in promotional material. The customization shop hired a third-party designer to paint the bikes using his own graphics and color scheme. The owner of the cycle customization shop also hired a noted motorcycle photographer, at the bequest of Kawasaki, to take pictures of the customized ZX-14s. The customization shop never entered into written agreements with either the paint job designer or the photog.

The photog claimed, but it was disputed, that the customization shop assured him that the photos would only be used on placard besides a showing of the ZX-14s at Daytona Bike Week and that the photos would not be leaked before the release of a forthcoming issue of Two Wheel Tuner, which feature pictures of his of the bikes from a different photo shoot. Instead, Kawasaki used the photos in a press release which they distributed to the media, the customization shop distributed the photos on its website, and the motorcycle publication Cycle World published three of the photos that were included in Kawasaki’s press kits.

The photographer brought suit alleging, inter alia, that (1) the customization shop unlawfully distributed his photos on its website; (2) Kawasaki unlawfully distributed his photos as part of its press kits, and (3) the publisher of Cycle World magazine unlawfully distributed his photographs in the magazine.

The defendants moved for summary judgment arguing that the photographs were “unauthorized derivative works based upon protectable preexisting works” of the third-party artist who painted the bikes. The district court granted summary judgment to Kawasaki and the publisher of Cycle World finding that the phtog granted Kawasaki an implied license to use the photographs in its press release materials, and that Cycle World’s subsequent publication of the photographs was fair use (the District Court raised the issue of fair use sua sponte). The District Court also found that the photographs were not derivative works of the third-party artist’s paint design.

The Eleventh Circuit delved into a discussion of whether a photograph is a derivative work but ultimately found that the third-party paint artist had granted a non-exclusive license to the photog. The Court found that the third-party artist knew that the ZX-14 that he was customizing was ultimately for Kawasaki’s promotional purposes. The Circuit found that it was “reasonable to infer” that the third-party artist intended that his artwork be photographed and distributed by Kawasaki, the motorcycle customization shop, and the media. The Circuit thus found that the photographs were not infringing, and sidestepped the need to answer the question of whether the photographs were derivative of the the third-party artist’s paint work.

Fair use

The Court also addressed the issue of whether fair use can be raised by a court sua sponte. The defendant-appellees elected not to assert fair use in their answer or in their motion for summary judgment. In a series of rather peculiar events, fair use was first raised by the district court sua sponte in its summary judgment order. It later vacated the order to allow the parties to brief, among other things, the issue of fair use. In the defendants brief on the second motion for summary judgment they stated “Defendants respectfully suggest that this Court need not go as far as fair use analysis in order to determine, as a matter of law, that [Cycle World's] use of the photographs was lawful.” On reconsideration the district court for a second time entered summary judgment in favor of the publisher of Cycle World on the issue, finding its distribution of the photos were a non-infringing fair use.

The photog on appeal argued that, as an affirmative defense, fair use must be pled in an answer. The Eleventh Circuit found that the district court erred in raising the defense sua sponte. The Circuit, however, did not decide the question of whether the defense was waived. The Circuit found that although an affirmative defense usually must be raised in an answer, courts recognize exceptions to the general proposition. The Circuit also stated in a footnote that if factual questions in any resulting fair use analysis “are in dispute, these must be resolved by the jury.”

Religious translations are works of “imagination and creativity” for purposes of a fair use evaluation

Shourin Sen - 1 March 2010 – 4:03 pm

Filed under Assignment, Fair Use, Ownership, Settlement, Transfers

Society of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory, 2010 WL 548114 (D. Mass. 2010)

A Greek Orthodox Monastery brought a copyright suit alleging that an archbishop had infringed a series of its translations of religious texts and that the Archbishop had breached a Settlement Agreement reached in a prior lawsuit involving one of the disputed works.

Ownership

The Archbishop argued that the copyright to one of the works should as a matter of church law be transferred to the Rusian Orthodox Church Outside Russia. The argument was derived from an ongoing dispute that arose when the Greek Orthodox Monastery elected to leave the ROCOR. In 1994, the Massachusetts Supreme Judicial Court found that the Greek Orthodox Monastary was congregational in terms of property ownership and was the sole owner of all of its assets, not the ROCOR. See, e.g., Primate and Bishops’ Synod of the Russian Orthodox Church Outside Russia v. Russian Orthodox Church of the Holy Resurrection, Inc., 418 Mass. 1001, 636 N.E.2d 211 (1994). The Court found that it didn’t need to re-open the dispute because there was no written transfer:

The court need not, however, accept the Archbishop’s invitation to delve into the intricacies of the doctrine of neutral principles as it applies to ecclesiastical disputes. The Copyright Act provides a simpler statutory answer. After 1978, a transfer of copyright, other than by operation of law, “is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” 17 U.S.C. § 204(a).

As a side note, you can’t say for certain from the factual record, but this case may raise similar issues to those discussed in Schrock v. Learning Curve International, Inc., No. 08-1296 (7th Cir. 2009). The exclusive rights granted to a work employing preexisting material covered by copyright, such as many translations, do not extend to any part of the work in which the material was used without permission. 17 U.S.C. 103(a).

If the greek text of the disputed work contains copyrightable subject matter added by the ROCOR, such as annotations or editing choices made recent enough so that they are not in the public domain, the Monastary may, or may not, possess exclusive rights in its translation of the text. The outcome would depend on whether the Court adopted the Seventh Circuit’s finding from Schrock that when a rightsholder grants permission to a second author to make a derivative work, barring an agreement between the parties otherwise, the second author retains a copyright in the derivative work, even if the rightsholder later attempts to revoke permission.

Fair Use

The Archbishop’s copying of one of the works at issue omitted footnotes and three words, added some question marks, changed the spelling of six words, and added some headlines. The Court found that the work was substantially similar to the Monastery’s.

The Court then looked to whether the copying was a non-infringing fair use. The Court cited Campbell v. Acuff Rose for the proposition that not only is fair use an affirmative defense, but that a defendant has a “burden of proof” to show that the copying was non-infringing. The Court found that the use of the work was infringing.

Purpose and character

The Archbishop argued that his use was non-commercial (purely for devotional purposes), which was not disputed, and that his use was transformative because he placed a portion on the internet. The Court rejected the argument finding that a “simple repackaging” of a work in a new media context is “not transformative when the result is simply a mirror image reflected on a new mirror,” and found that the factor weighed in favor of the Monastery.

Nature of the copyrighted work

The Archbishop argued that the work at issue was factual as part of his religion, and as such, the factor weighed in favor of a finding of fair use. The Court found that the work was more closely akin to a creative work:

As a theological precept, this may ring true to a believer, but from an objective legal perspective, a religious contemplation in the form of a Homily (an admonitory sermon or discourse) falls more appropriately within the category of a work of imagination and creativity. While a translation is by definition derivative, some translations-the King James Version of the Bible comes to mind-are nonetheless thought to be “original in their own right.” This factor, on the whole, weighs in favor of the Monastery.

The amount and substantiality

The Court found that the Archbishop incorporated the entirety of one of the works on his website for “no apparent purpose other than avoiding the trouble and expense of creating a version of his own.”

Market harm

The Monastery did not allege any specific lost sales or profits as a result of the infringement. The Monastary instead noted that it has had to expend time and resources to enforce its rights in the work. The Court found that, “given Campbell’s emphasis on the deterrence of injurious conduct by others as a consideration separate and apart from a showing of actual market harm, this factor too weighs in favor of the Monastery.”

Daily Copyright Roundup

Shourin Sen - 24 February 2010 – 9:00 am

Filed under Daily Copyright Roundup, Fair Use, IP Czar, Pro-IP Act, Settlement

I haven’t written a daily roundup in a while. There are a number of recent stories, besides the ACTA leak, that deserve a mention.

The Tennessean is reporting that a suit brought by a music publishing company against A&E over its use of twelve seconds of the song “Rocky Top” has settled. We discussed this case in mid-November when the Middle District of Tennessee found that the use by the network was not fair use, at least without further development of the factual record. No details of the settlement were released.

Victoria Espinel, the U.S. Intellectual Property Enforcement Coordinator or I.P. Czar, announced on the White House blog that she formally requested written submissions from the public on the Joint Strategic Plan for intellectual property enforcement:

To further these goals, we are working to find ways of measuring these threats and their impact on us. How many jobs depend on the existence of intellectual property? What are the greatest risks to health and safety? We need better data on these questions and it is part of my job to figure out what the answers are. We cannot do that without your help. So, my office is asking the public to give us information about the costs and the risks – and then give us suggestions for what we could be doing better as a government. As a first step, we are issuing a notice to the public asking for your input. Here’s a link to this request (pdf). You can send your comments to intellectualproperty@omb.eop.gov. We look forward to hearing from you.

The formal request for written submissions is published in the Federal Register. (H/t Ben Sheffner.)

Eleanor M. Lackman, a Senior Associate in the IP, Media & Technology group at Lovells NY, wrote an article in the New York State Bar Association publication Bright Ideas on the standard for obtaining a preliminary injunction in copyright cases. The article, titled “Factoring in the Public Interest: The Impact of eBay on Injunctive Relief in Copyright Cases,” discusses Salinger v. Colting and Winter v. Natural Resources Defense Council, and contains Ms. Lackman’s predictions about the future of the preliminary injunction standard:

Even in advance of that ruling, however, the debate in Salinger and other cases has awakened courts to the fact that injunctive relief in copyright cases may no longer be so easy to obtain—at least not without an evidentiary proffer on each of the four eBay factors, which were rarely addressed in copyright cases prior to eBay. eBay also may have an impact on the negotiation of licensing fees and money-based settlements.

In light of all the ways eBay might affect copyright law, this article addresses the following four questions: (1) Does the four-factor test enunciated in eBay apply to copyright cases? (2) Does the four-factor test apply to both preliminary and permanent injunctions? (3) How will the four factors be addressed by the courts? and (4) What can a potential copyright licensor, licensee, plaintiff, or defendant expect in the post-eBay world?

A&E denied motion to dismiss claim stemming from its use of “Rocky Top” for 12-14 seconds

Shourin Sen - 13 November 2009 – 9:00 am

Filed under Fair Use

House of Bryant Publications, LLC v. A & E Television Networks, 2009 WL 3673055 (M.D. Tenn. 2009)

The Plaintiff was the copyright owner of the musical composition “Rocky Top,” the state song of Tennessee. The Defendant, cable television network A&E, was involved in the production and distribution of a show City Confidential. One episode from the show, which ran around forty-seven minutes in length, featured a section on Knoxville, Tennessee’s cultural scene (“and, as the stark-raving orange clad masses will attest, they play a little football too.”)

The show featured the UT marching band playing “Rocky Top” for six to seven seconds, where the song was clearly heard; and then, after a break of five to six seconds, the song reappeared less prominently for another six to seven seconds. The Plaintiff brought suit alleging that A&E’s use of the “Rocky Top” in the program was an unauthorized infringing use. A&E moved to dismiss arguing fair use, which the Court denied.

Judicial notice

The Plaintiff filed its complaint without attaching a copy of “Rocky Top” or the allegedly infringing show. A&E asked the Court to take judicial notice of the sheet music and it’s television show so that it’s motion to dismiss wouldn’t be converted into a motion for summary judgment. Federal Rule of Civil Procedure 12(d) states that if “matters outside the pleadings are presented to and not excluded by the court, the [Rule 12(b)(6) ] motion must be treated as one for summary judgment under Rule 56.”

The Court found that the discussion of judicial notice was unnecessary and instead found that it could consider the sheet music and the television episode part of the pleadings:

[U]nder certain circumstances, material “that is not formally incorporated by reference or attached to a complaint may still be considered part of the pleadings.” Greenberg v. Life Ins. Co. of Virginia, 177 F.3d 507, 514 (6th Cir.1999) (internal citations and quotations omitted) (discussing “documents” not attached to the complaint, but not limiting the potential scope of the rule thereto). This occurs when material “is referred to in the complaint and is central to the plaintiff’s claim…. In such event, the defendant may submit an authentic copy to the court to be considered on a motion to dismiss, and the court’s consideration of the [material] does not require conversion of the motion to one for summary judgment.” Id. The Sixth Circuit has also noted that “a defendant may introduce certain pertinent documents if the plaintiff fails to do so…. Otherwise, a plaintiff with a legally deficient claim could survive a motion to dismiss simply by failing to attach a dispositive document upon which it relied.” Weiner v. Klais & Co., Inc., 108 F.3d 86, 89 (6th Cir.1997).

Fair use

The Court, perhaps looking to encourage a settlement, found that dismissing the claims on fair use grounds was improper at the stage of the proceedings. Both the Plaintiffs and A&E used Lennon v. Premise Media Corp., 556 F.Supp.2d 310 (S.D.N.Y.2008) as precedent. In that case, Lennon’s estate sued the producers and directors of a movie over the unauthorized use of fifteen seconds of “Imagine.” The filmmakers used the song as a background during a section of their movie that argued that scientists who advocate society should abandon religion were “lifting a page of John Lennon’s songbook.” The Court in House of Bryant distinguished the current case from Lennon, where the S.D.N.Y. found the use was transformative, on the grounds that in Lennon there were affidavits and declarations identifying transformative aspects:

Here, because the defendant seeks the dismissal of the plaintiff’s Complaint without the benefit of discovery, there is nothing to “ease” the court’s task of finding a transformative use. Moreover, in contrast with Lennon, the transformative nature of “Rocky Top” is unapparent from a basic viewing of the Episode. In the Episode, there is no allusion to “Rocky Top” prior to its playing, and there is no perceptible attempt to actually place “Rocky Top” in any sort of larger context. As indicated above, just before “Rocky Top” plays, there is a general discussion of UT being a haven for college football, but there is no commentary, criticism or even discussion of “Rocky Top.” Rather, basically, the excerpt from “Rocky Top” simply plays, fades, and then stops, and the Episode moves on to the next topic.

6th Cir. finds that jury fair use instructions not erroneous

Shourin Sen - 10 November 2009 – 9:00 am

Filed under Fair Use, Jury Instructions

Bridgeport Music, Inc. v. UMG Recordings, Inc., 2009 WL 3617470 (6th Cir. 2009)

This past summer there was a storm of discussion on the intertubes about whether fair use was a question that was appropriate for a jury, or whether it was exclusively the domain of judges. The question arose in Sony v. Tenenbaum when Judge Gertner asked the parties to brief whether “fair use was historically treated as an equitable defense and, if so, whether it is properly decided by the judge or a jury.”

The Court in Tennenbaum recognized that many courts have labeled fair use an equitable defense, and that generally equitable defenses, such as latches and acquiescence, historically were the province of judges, not juries. The Tenenbaum Court, however, noted that authorities on the issue were “conflicting” or “imprecise,” and that there has been a string of decisions finding that fair use is appropriate for a jury:

Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982) (upholding special jury verdict finding that defendants’ use of films was fair use); BUC INt’l Corp. v. Int’l Yacht Council, 489 F.3d 1129, 1137 (11th Cir. 2007) (noting that fair use defense was presented to the jury); New York Univ. v. Planet Earth Found, 163 Fed. Appx 13 (2d. Cir. 2005) (upholding the jury’s fair use finding; see also Roy Export Co. Estab of Vaduz Liech Black Inc. v. Columbia Broad Sys. Inc., 503 F.Supp. 1137 (D.C.N.Y. 1980) citing Meeropol v. Nizer, 560 F.2d 1061, 1071 (2d. Cir. 1977) (characterizing fair use as a question for the jury to decide)); Harris v. San Jose Mercury News, Inc., No. C 04-05262 CRB, 2006 WL 995151, at 1 (N.D. Cal. Apr. 10, 2006) (raising fair use as a mixed question of law and fact, yet declaring the issue more appropriately resolved by a jury even when facts were not in dispute.)

William Patry also weighed in at the time on Tenenbaum’s counsel’s blog, stating that “[t]he occasional statements about fair use being an equitable defense are, in my opinion ahistorical (Judge Leval agrees).”

Well, we can add another to the list of fair use jury cases. Bridgeport alleged that the song “D.O.G. in Me,” by the R&B group Public Announcement, a UMG recording artist, infringed George Clinton’s work “Atomic Dog.”A jury found UMG liable for infringement, rejecting a fair use defense.

On appeal, UMG argued that the District Court’s fair use charge was “erroneous” and “prevented the jury from considering its fair-use defense, i.e., that copying certain elements from “Atomic Dog” in “D.O.G. in Me” was intended as an homage or tribute and that a properly instructed jury would have concluded that the use of these elements for that purpose was fair.” The Sixth Circuit rejected the argument finding that the instructions were not erroneous:

Specifically, the defendant assigns error to the district court’s charge to the jury that an homage or tribute is “not necessarily fair use.” That charge is, however, an accurate statement of the law. See 17 U.S.C. § 107 (purpose and character of the use is only one factor); Campbell, 510 U.S. at 578-90 (weighing all factors in light of the purposes of copyright). Moreover, UMG failed to introduce any evidence that would have explained why the songwriter chose to include elements of “Atomic Dog” to honor George Clinton, nor was the purported tribute acknowledged in the credits or liner notes to the album.

Wu on fair use and the Fairey Hope image

Shourin Sen - 2 November 2009 – 9:00 am

Filed under Academia, Fair Use

Tim Wu, Professor of Law at Columbia and blogger, wrote an article for Slate last week titled “Is There ‘Hope’ for Shepard Fairey? How does fair-use law work, anyway?” The article strikes me as good vehicle to explain fair use to people who are just starting to explore copyright in that it is sufficiently wonky to dig beneath the surface of a sometimes murky issue, but at the same, written in prose that is geared towards a broader audience. Wu explains fair use through situational categories, similar to the type suggested in Pamela Samuelson’s work Unbundling Fair Use:

What counts as a “good reason”? In addition to our two examples, take a look at what has been declared fair use by courts or legislatures. They include:

Quotations of reasonable length

Parody (but not satire)

Use in news reporting

Time-shifting (recording TV for later viewing)

Thumbnailing (resizing) for image search engines

Reverse-engineering for a new operating platform (figuring out what you need to do to write a game that works on a Sony Playstation)

Limited copying for classroom or educational use

Wu proceeds to pin down why so many copyright pundits are fascinated by the Associated Press-Shepard Fairey copyright dispute, at least before the recent revelations about the assertions in Fairey’s complaint: It presents a new category that has yet to be evaluated:

Shepard Fairey’s case, setting aside his recent troubles for a moment, is one of these new areas. To “Warholize” someone else’s photo (if that’s the right verb) doesn’t fall within an existing category of fair use. So the question is whether it should.

Wu ends by explaining why the four factors Judge Story used in Folsom v. March, now embodied in law in 17 U.S.C. 107, often seem to play a marginal role when courts evaluate fair use today, outside of the context and era of the opinion:

Oddly enough—and, to my mind, for no particularly good reason—other thoughts of Story’s from 1841 on fair use remain the law. In Story’s time, the Supreme Court heard a copyright dispute over an abridgment of a long biography of George Washington. Story wrote “we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” . . .

Is the [Hope image] fair use? Odds are, Story’s general principles didn’t answer the question for you. More probably, you have a gut reaction of some kind, which is, of course, how judging generally works—as Justice Oliver Wendell Holmes once put it, judges decide first and write their reasons later.

Ned Snow: Fair Use, Summary Judgment, and the Constitution

Shourin Sen - 28 August 2009 – 9:00 am

Filed under Academia, Fair Use

Ned Snow, Associate Professor of Law at the University of Arkansas, has posted a rather timely article on SSRN. The article addresses how courts have historically treated the issue of whether fair use is a question appropriate for a jury:

Summary judgment has become commonplace to decide issues of fair use in copyright cases. But it was not always so. For well over a century, juries routinely decided issues of fair use. Courts recognized that the subjective nature of inferences in the fair use analysis made those inferences factual, precluding a summary disposition. They understood that the Seventh Amendment right to a jury and the First Amendment right of free speech demanded juries in fair use cases. Today, however, all this has been forgotten. Courts of today characterize the inferences in the fair use analysis as entirely legal so that summary judgment is appropriate. This Article examines the question of whether these inferences constitute matters of fact or matters of law. It further examines the reasons for which courts changed their characterization of these inferences, along with the constitutional tensions that have arisen as a result of this changed characterization.

Moral Panics, Costco, Salinger v. Colting, and the elimination of the fee for expedited filing if litigation is pending

Shourin Sen - 11 August 2009 – 9:00 am

Filed under Fair Use, First Sale, Importation, News, Registration

Moral Panics

As a number of other copyright blogs have noted, William Patry’s new book Moral Panics and the Copyright Wars has hit the shelves along with a new blog. Mr. Patry’s role in shaping copyright is undeniable, from his work on the Visual Artists Rights Act and the Architectural Works Copyright Protection Act, to his treatise, Patry on Copyright, and his role as Chief Copyright Counsel at Google. My copy of Moral Panics shipped yesterday morning, and like many others, I am anxiously awaiting its arrival.

Costco v. Omega

A friend of the program was kind enough to pass along the most recent filings in Costco v. Omega, including Omega’s opposition brief and Costco’s reply. The cert petition was Distributed for the Conference on September 29, 2009, the Supreme Court’s long conference where it decides which cases to hear in the fall and early winter.

The full list of documents is here:

Salinger v. Colting

The New York Times Company, the Associated Press, the Gannett Company and the Tribune Company have filed an amicus brief arguing for reversal of the granting of a preliminary injunction in Salinger v. Colting.

Library of Congress

The Library of Congress has published a new rule, effective immediately through July 1, 2011, that eliminates the fee for an expedited filing when an applicant needs registration to file suit for copyright infringement. The previous fee was $760. This appears to be one of a series of moves aimed at remedying or at least alleviating the problems caused by the backlog for obtaining copyright registration. The most controversial of the measures may be the proposed amendment that would eliminate mandatory deposit for electronic works. (Are we allowed to call this the Facebook amendment?)

Salinger wins preliminary injunction against the release of Catcher follow-up

Shourin Sen - 6 July 2009 – 9:00 am

Filed under Fair Use

Salinger v. Colting, 09 civ 5095-DAB (S.D.N.Y. 2009)

The big news in copyright from the holiday weekend was a fair use decision issued in the Southern District of New York. Author J.D. Salinger alleged that a book 60 Years Later: Coming Through the Rye infringed his celebrated work The Catcher in the Rye. In the motion at bar, Salinger sought to preliminarily enjoin the Defendant from the distribution and promotion of its work. The Court found that Salinger was likely to succeed on the merits of his copyright claim and granted the injunction.

On whether 60 Years was a parody of The Catcher

The Court found that 60 Years didn’t contain a reasonably perceivable parodic character because its “plain purpose [was] not to expose Holden Caufield’s disconnectedness, absurdity, and ridiculousness, but rather to satisfy Holden’s fans’ passion for Holden Caufield’s disconnectedness, absurdity, and ridiculousness, which Catcher has raised into the realm of protectable creative expression.”

On whether 60 Years was a Parody of Salinger

The Defendant incorporated J.D. Salinger, the author himself, as a character in 60 Years. The Defendant claimed that the inclusion of the character parodied Salinger, and by proxy, Catcher in the Rye. The Court ostensibly drew a hard line between commenting on an author’s preexisting works and commenting on the author himself:

Campbell and its progeny define the limits of parody to include only those elements that criticize or comment upon the source author’s works, rather than the author himself. Campbell at 580 (“the hear of any parodist’s claim to quote from existing material, is the use of some of the prior author’s composition to create a new one that, at least in part, on that author’s works.”) (emphasis added); id. at 597 (Kennedy, J., concurring); (“. . . parody may qualify only as fair use only if it draws upon the original composition to make humorous or iconic [sic] commentary about that same composition.”) (emphasis added); see also, Suntrust Bank, 268 F.3d at 1268 (“For purposes of our fair use analysis, we will treat a work as a parody if its aim is to comment upon or criticize a prior work . . . “) (emphasis added); Dr. Seuss Enterprise, L.P. v. Penguin Books USA, Inc., 924 F.Supp. 1559, 1569 (S.D. Cal. 1996) (“Courts have allowed claims only where there was a discernable direct comment on the original.”) (emphasis added.)

The Court found that the Defendant’s use of Salinger as a character in order to criticize the author’s alleged propensity to exercise “iron-clad control over his intellectual property, refusing to allow others to adapt any of his characters in other media,” was at most a tool with which to criticize and comment on the author, J.D. Salinger and his idiosyncrasies.” It did not, the Court stated, “direct the criticism toward Catcher and Caufield themselves, and thus is not an example of parody.”

17 U.S.C. 107 factors

(1) Purpose and character: The Court found that the work was commercial in nature.

(2) Nature of the copyrighted work: The Court found that The Catcher in the Rye is the type of work that “falls within the core of copyright law’s protective purpose.”

(3) Amount and substantiality: The Court found that the Defendants had taken “well more from Catcher, in both substance and style, than is necessary for the alleged transformative purpose.”

(4) Effect of the use upon the potential market value of the Copyrighted Work: The Court found that it was unlikely that the Defendant’s work would harm the market for Catcher in the Rye, but that it could harm the potential market for a Catcher sequel or other derivative work.

Comments

I find myself disappointed with the hard-line distinction the Court drew between criticizing an author, and criticizing an author’s works. First and foremost this is a false division. Yes, a work must comment on a preexisting work to be considered a parody. But surely a work that comments on a preexising work’s author is also commenting by proxy on the preexisting work itself.

Indeed, from a policy perspective, I think the rationale for finding a work noninfringing is often stronger if it comments on the author of a preexisting work, rather than if it only comments on the works produced by the author: think unscrupulous business, labor, or environmental practices. If courts were to adopt the hard-line distinction between an author and an author’s works, a parody that uses a preexisting work to lampoon the author’s questionable business practices would be infringing.

The theoretical and policy rationales aside, the distinction between commenting on an author and an author’s works strikes me as inconsistent with the underpinnings of Souter’s opinion in Campbell. The majority opinion stands for many, many things, but perhaps most important is the idea that fair use is a common law analysis not to be dictated by hard and fast rules. The majority opinion goes as far as to state that while parody and satire should be treated differently, satire can also be a non-infringing fair use under certain circumstances.

The distinction between an author and an author’s works strikes me as the type of rule that Justice Souter tried hard to eliminate; the type of rule that is formulated in circuits that see many copyright cases because it’s convenient, and then is later misapplied in circuits that don’t see many copyright cases.

UGA in copyright war over marijuana decriminalization student group’s use of a cartoon bulldog

Shourin Sen - 8 April 2009 – 10:52 pm

Filed under Fair Use, Parody

The Red and Black, the school newspaper at the University of Georgia has a story about an escalating hullabaloo between the school’s administration and a student group that advocates the decriminalization of marijuana. The University of Georgia is claiming that the National Organization for the Reform of Marijuana Laws (NORML) violated the University’s copyrights by printing a cartoon bulldog on 50 shirts and the group’s website without prior approval. Reports Carey O’Neil:

[The program adviser of the Center for Student Organizations] said after Legal Affairs notified her of the problem, she sent e-mails to the student officers, asking them to return unsold shirts and remove the image from their Web site by the following evening. . . “There were two opportunities for the group to take action,” he said, but when the logo was still on the Web site at the deadline, Legal Affairs was notified and Enterprise Information and Technology Services was asked to block the site.

* * * * *

[The leader of NORML said]: “If you prosecute us over this image, it would be like prosecuting Andy Warhol for his painting of Campbell’s Soup.” Stone said at the hearing that he didn’t look at University images as inspiration for drawing. “For my primary model for my version of the bulldog I used a Looney Toons version,” he said. [The student leader] said anyone who saw the drawing would immediately recognize it as a parody or satire. He said his group was being unfairly targeted.

The hearing ended Tuesday evening without resolution and will reconvene next Thursday.