Copyright Law Blog: Exclusive Rights

Category Archives: Fair Use

Wyeth denied summary judgment on use of sculpture in advert

Shourin Sen - 20 March 2009 – 9:00 am

Filed under Fair Use

Reyes v. Wyeth Pharmaceuticals, Inc., 2009 WL 661393 (D.P.R. Mar. 9, 2009)

Martha Reyes created a glass sculpture titled “Watcher of the Fire.” Reyes lent the sculpture to Cordero, one of the defendants, so that he would photograph the work. Reyes had never exhibited the sculpture or offered it for sale.

Cordero, unbenounced to Reyes, offered the sculpture to Wyeth, Amgen and ERC Communications for use in a publicity campaign. ERC drafted an advertisement that contained the work, which ran in the El Nuevo Dia newspaper. Reyes recognized the sculpture and apparently, though the record was unclear, contacted authorities, which lead to the filing of criminal charges against Cordero.

The Defendants in this action moved for summary judgement, arguing that the advertisement was a noninfringing fair use. Judge Francisco A. Besosa of the federal district court in San Juan denied.

Purpose And Character Of The Use

Wyeth argued that its use was noncommercial because the advertisement was meant to raise public awareness for rheumatoid arthritis. Judge Besosa wasn’t convinced:

On the whole, this first statutory factor, purpose and character of use, neither weighs strongly for or against a finding of fair use. Although defendants’ use of the Watcher was somewhat transformative, it was minimally so. Similarly, although defendants present the “naci para crear” and “Salud Wyeth” campaigns as educational and non-commercial enterprises, the Court finds that they nonetheless stand to profit from them, and thus from the utilization of the Watcher. Lastly, in utilizing the Watcher as part of the “naci para crear” campaign, Cordero did not act in good faith. Because the profit/nonprofit distinction and the good faith sub factors do not carry overwhelming weight, when viewed alongside an only somewhat transformative use, the final balance is neutral.

Nature Of The Copyrighted Work

The Court found that as a creative work of art, the sculpture fell closer to the traditional core of “intended copyright protection.”

Amount And Substantiality Of The Portion Used

The Court’s analysis of amount and substantiality was somewhat interesting. Judge Besosa found that Wyeth didn’t copy more of the sculpture than was necessary:

Defendants’ message certainly could have been communicated in ways that did not involve the Watcher, but that is not the focus of this inquiry. Given that defendants chose to present an artist exhibiting art, their message could not have been communicated as effectively by obscuring or including only part of the sculpture. Thus the Court finds that the defendants did not copy more of the Watcher than was necessary to communicate their message. Accordingly, this factor neither weighs for nor against a finding of fair use.

Effect Of The Use Upon The Market For Or Value Of The Copyrighted Work

Judge Besosa centered the market effect analysis on potential implications of similar wide scale uses:

The Court must also ask whether wide scale use of works of art (or sculptures in particular) in advertisements or other visual media would in general affect the market for such artwork. Nuñez, 235 F.3d at 24-25. While this is a somewhat nuanced question (depending upon the purpose of the sculpture and how it is used in the visual media) it is clear that widespread use of artwork in advertisements without permission of the copyright holder would destroy the market for selling the artwork for use in advertisements.

The Court found that the factors, when weighed together, “tilt the scales” against a finding of fair use.

Family Guy’s use of “When You Wish Upon a Star” in “I Need a Jew” found to be a non-infringing fair use

Shourin Sen - 17 March 2009 – 7:45 am

Filed under Fair Use, Parody

S.D.N.Y Judge Deborah A. Batts issued an interesting decision yesterday that addressed a caricature of the children’s song “When You Wish Upon a Star.”

Background:

Fox created and produced the show “Family Guy.” One of the episodes, “When You Wish Upon a Weinstein,” lampooned Peter, the show’s father character, for believing in racial stereotypes about Jewish people. The episode featured a song “I Need a Jew” set to the music of “When You Wish Upon a Star.” Fox requested permission from Bourne & Co., the song’s publisher, but was rebuffed.

Bourne brought suit for infringement alleging that “I Need a Jew” “consist[ed] of of a thinly-veiled copy of the music ‘When You Wish Upon a Star’ coupled with anti-Semitic lyrics.” Fox moved to dismiss. The parties agreed that the work would be infringing sans fair use. But there was dispute, which Judge Batts for purposes of the motion resolved in favor of Bourne, over whether “When You Wish Upon a Star” was associated with Walt Disney and his namesake corporation, and whether Disney’s rumored anti-Semitism was a part of the “popular lore” surrounding the Walt Disney persona.

Satire v. Parody:

Fox sought to justify its use as parody in two ways:

1) as a comment on the “saccharine sweet,” “innocent” and “wholesome” world view presented in and represented by “When You Wish Upon a Star,” and 2) by evoking “the song most associated with Walt Disney and his company” Commenting “on the song while simultaneously making a sharp point about Walt Disney’s reputed anti-Semitism”

Bourne argued that Fox only commented on racism and bigotry and not on the song “When You Wish Upon a Star” itself, which Judge Batts fiercely rejected:

Defendants’ use of “When You Wish Upon a Star” calls to mind a warm and fuzzy view that is ultimately nonsense; wishing upon a star does not, in fact, make one’s dreams come true. By pairing Peter’s “positive,” through racist, stereotypes of Jewish people with the fairy tale world-view, “I Need a Jew “comments both on the original work’s fantasy of stardust and magic, as well as Peter’s fantasy of the “superiority” of Jews. The song can be “reasonably perceived” to be commenting that any categorical view of a race of people is childish and simplistic, just like wishing upon a star.

Of particular note, Judge Batts absolved Fox of the need to show that the public equated “When You Wish Upon a Star” with Disney or that the public associated Walt Disney with anti-Semitism. Judge Batts found that, since a parody doesn’t have to be effective to be considered a fair use, a court only needs to find that a parodic character is “reasonably perceived.”

Plaintiffs argue that the evidence fails to support Defendants’ claim that they intended in the Episode at issue to comment on Walt Disney’s purported anti-Semitism. First, Plaintiff argues that although “When You Wish Upon a Star” ” was sometimes used as a theme song . . . by the Walt Disney Company” Bourne “specifically refused to admit that their song was associated in the minds of the public with the Disney Company or was in any way associated with Walt Disney individually or personally, and further refused to admit that the public associates the Disney Company with Walt Disney personally.” Further , Plaintiff argues that Defendants have provided “no admissible evidence that the public actually believes Mr. Disney was an anti-Semite.”

However, Plaintiff misapprehends the nature of the inquiry in making both of these arguments. Defendants need to prove neither that the public associates the song with Walt Disney individually or personally nor “actually believes” Walt Disney was an anti-Semite; Defendants need only demonstrate that “a pardoic character may be reasonably perceived” Campbell, 510 U.S. at 582-583. Further, the Supreme Court has held that the law protects parodies even when the fail to speak clearly. Campbell, at 582 quoting Yankee Publishing Inc. v. News America Publishing, Inc. 809 F.Supp. 267 280 (S.D.N.Y. 1992) (Leval, J.) (noting “First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed”). Therefore , even if Defendants intended to make an “inside joke” about Walt Disney’s alleged anti-Semitism but that joke failed, it can still support a finding of fair use if it’s “parodic character can be reasonably perceived.”

I. Purpose and character

The second interesting part of the judgment concerned the Court’s evaluation of the first prong of a fair use evaluation, purpose and character. Judge Batts side-stepped the question of whether the work was commercial or non-commercial and only addressed whether the use was transformative.

The Court finds that the new work is transformative; consequently the first factor weighs in favor of a finding of fair use.

IV. Effect of the Use Upon the Potential Market

A third noteworthy part of the decision is Judge Batt’s examination of potential market harm. Similar to our analysis of “Goodnight Bush,” “I Need a Jew” wasn’t a risk to act as a market substitute for “When You Wish Upon a Star”:

Even Plaintiff admits that its song is known for its wholesomeness and sweetness, where Family Guy’s parody of it is so different as to be (they argue) offensive. Plaintiff does not even make the contention that “I Need a Jew” could in any way for “When You Wish Upon a Star.

Instead, Bourne argued that it was losing an opportunity to license its works, which Batts rejected:

Plaintiffs argues for a reading of the fourth factor that would swallow the rule entirely. All uses of copyrighted work under a fair use rationale deprive the owner of licensing fees. If a parody of the original work would usurp the market for licensing other comedic uses of the original work, then all parodies would fail under this prong of the analysis. The Supreme Court clearly intended otherwise as did Congress in creating an opportunity for fair use under 17 U.S.C. 107.

Thus, Judge Batts dismissed the claim for copyright infringement:

Plaintiff reaps the benefit of their song’s association with Pinocchio and Disney, and enjoys its reputation for wholesomeness; it is precisely that beneficial association that opens the song up to ridicule by parodists seeking to take the wind out of such lofty, magical, or pure associations.

Documents:

Bourne Co. v. Twentieth Century Fox Film Corporation et al, 07 cv 08580 DAB (March 16, 2009)

Odds and ends

Shourin Sen - 29 January 2009 – 1:30 am

Filed under Fair Use, Foreign, IP Czar, News

IP-Czar and President Obama’s Excecutive Order on transparency/lobbyist ties

The always insightful Ben Sheffner wrote a response to my post on the IP-Czar and President Obama’s Executive Order on lobbying. If I were to reply to Mr. Sheffner, I’d make the exact same point Ben made when I first questioned whether President Obama’s campaign promises would affect his decision: On issues like these, we the voters are both judge and jury.

It’s pretty obvious that Obama’s Executive Order, as well as many of his and other candidates’ campaign promises are designed to be open-ended. They’re meant to sound expansive but tie the candidate down to very little, lest they be unable to deliver.

I don’t disagree with Ben’s comments that the Order is drafted in such a fashion that you can poke holes in the text. But to draw a line between a “general” issue and a “specific” issue would render the executive order just about completely meaningless. And since we the public get to be both judge and jury on these types of issues, I hereby decree, with the power invested in me by neighbor’s cat, that if President Obama tries to pick apart minutia and make that argument, I’m going to disagree. To state otherwise would be a little too reminiscent of Bill Clinton and the definition of “is.”

Microsoft Corp. v. Big Boy Distribution LLC:

About a month ago, I wrote about a case in the S.D. Fla, Microsoft Corp. v. Big Boy Distribution LLC, et al. Counsel for Big Boy had filed a motion to reconsider summary judgment on the grounds that the tribunal should have applied Jordanian law while evaluating the license at issue. On January 13, the Court dismissed the motion to reconsider sans accompanying memorandum.

And finally from the 1981 time machine:

Imagine if you will, sitting down for your morning coffee, and turning on your home computer to read the day’s newspaper. Well, it’s not as far fetched as it may seem.

Pamela Samuelson: Unbundling Fair Use

Shourin Sen - 26 January 2009 – 12:45 am

Filed under Academia, Fair Use

Pamela Samuelson, the always intriguing Richard M. Sherman Distinguished Professor of Law at Berkeley Law School, has posted a new paper on SSRN titled “Unbundling Fair Use.” In the paper, Samuelson argues that judges and scholars should “stop wringing their hands about how troublesome fair use law is, and look instead for common patterns in the fair use case law upon which to build a more predictable body of fair use law.” Says Samuelson:

This Article argues that fair use law is both more coherent and more predictable than many commentators have perceived once one recognizes that fair use cases tend to fall into common patterns, or what this Article will call policy-relevant clusters. The policies underlie modern fair use law include promoting freedom of speech and of expression, the ongoing progress of authorship, learning, access to information, truth-telling or truth-seeking, competition, technological innovation, and privacy and autonomy interests of users. If one analyzes putative fair uses in light of cases previously decided in the same policy cluster, it is generally possible to predict whether a use is likely to be fair or unfair.

Professor Samuelson then proceeds to categorize fair use cases, dictating exclusions and standards-based analysis when they are applicable to individual clusters. Samuelson also raises an interesting argument in her conclusion in regards to creating a burden on plaintiffs if a fair use defense is raised:

Courts should treat fair use as they would statute of limitations defenses, which a defendant must raise in answering a complaint, after which the burden shifts to the plaintiff to demonstrate that the acts complained were recent enough to be within the limitations period. Given the important role that fair use plays in mediating tensions between copyright law and the First Amendment and other constitutional values, it would be appropriate for the burden of showing unfairness to be on the copyright owner. When deciding whether to challenge a use as infringement, rights holders often anticipate that fair use will be at issue in the case, and they are typically in a better position than defendants to offer proof on key issues pertinent to fair use, such as the likelihood of harm to the market. If copyright owners cannot show that a use is likely to cause harm to markets for their works, why shouldn’t the use be allowed as fair? At the very least, copyright owners should bear the burden of proving unfairness in free speech/expression, personal use, and litigation use cases.

Fair use cocaine lines and a donkey and elephant humping

Shourin Sen - 7 December 2008 – 8:15 pm

Filed under Fair Use, News

How’s that for a drudge headline?

I just received the greatest Christmas gift evah’, a copy of Goodnight Bush, by Erich Origen & Gan Golan. The book is dork-candy for anyone obsessed with politics and copyright. (Thanks Nancy!)

Anyway, Goodnight Bush presents itself as a parody of the children’s classic Goodnight Moon. Instead of a child saying “goodnight” to everything around (“Goodnight Cow. Goodnight Moon. Goodnight cow jumping over the moon. Goodnight light, a red balloon . . .”), Goodnight Bush features our President saying “goodnight” to legal constructs (“Goodnight Constitution. Goodnight evolution”).

Little, Brown & Co., the publisher of Goodnight Bush, takes a number of steps to make it more likely that, should they be sued for copyright infringement, their work would be shielded from liability under fair use. The publisher placed labels on the front and back cover (“This book is a parody and has not been prepared, approved, or authorized by the creators of Goodnight Moon or their heirs or representatives”) and an artistic explanation on the last page that details how Goodnight Bush targets Goodnight Moon.

Of more interest to me, though, is how the authors may have designed the pictures in the book to bolster a fair use claim. This brings us, once again, to my favorite topic: how copyright shapes the content of artistic works. In this case, cocaine lines and a stuffed donkey and elephant humping.

In Goodnight Bush, our President is shown redying for sleep in his bedroom. As the story progresses, you see Mr. Bush in the same room with minor deatail alterations. When we first visit President Bush, there are five lines of cocaine on his nightstand. Each time we revisit the scene, there is one less line, until they’re all gone on the third to last page (“Goodnight failures everywhere”).

Likewise, the stuffed animals are shown in different poses. First the elephant and the donkey are standing alongside each other (above). Then the elephant is humping the donkey. Toward the end of the book, the donkey is shown humping the elephant — ostensibly portraying the Democratic Party’s success in the 2006 election cycle.

Let’s take a step back for a moment to review why these two inclusions bolster the authors fair use claim. As a threshold question, to run a fair use analysis, a court would first have to decide whether Goodnight Bush deserved to be evaluated as a parody. The test for parody, as stated by the Supreme Court in Campbell v. Acuff Rose Music, is “whether a parodic character may reasonably be perceived.” For the purposes of this diary, we’ll assume that a court would find Goodnight Bush is a parody.

Once the threshold question of whether a work is a parody is satisfied, it would shape a court’s evaluation of the four fair use 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 substantially 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.

To shoot through the factors quickly, the (1) authors’ purpose for Goodnight Bush is commercial, but as the Supreme Court set forward in Campbell, the purpose of a work isn’t dispositive and doesn’t preclude an evaluation using the other three factors. The (2) nature of the copyrighted work isn’t “likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works.”

In terms of (3) the amount and substantiality, Goodnight Bush mimics Goodnight Moon closely, but, as the Court described in Campbell, parody by necessity must incorporate a substantial amount of the preceding work. “When parody takes aim at a particular original work, the parody must be able to “conjure up” at least enough of that original to make the object of its critical wit recognizable.

So, the factor that is likely to be given strong weight in a potential parody case such as this is (4) the effect of the use upon the potential market for or value of the copyrighted work. As the Supreme Court noted in Campbell, the only harm that we are concerned about in a parody fair use evaluation is “the harm of market substitution. The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market.”

The less likely Goodnight Bush is to act as a market substitute for Goodnight Moon, the more likely it would be found to be shielded from liability. So how could the authors make sure that the book was completely unsuitable for the Goodnight Moon’s target audience? How could they make sure that Goodnight Bush couldn’t be used by parents to read to their children?

Cocaine lines and stuffed animals humping. What a funny, strange world we live in.

As an end note, the Supreme Court in Campbell explicitly stated that courts shouldn’t evaluate whether “a parody is in good taste or bad” when running a fair use analysis. Quoting Holmes:

[I]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (circus posters have copyright protection).

Baltimore Ravens’ use of logo in memorabilia held to be fair use in long-running dispute

Shourin Sen - 26 November 2008 – 12:19 am

Filed under Fair Use

Frederick E Bouchat v. Baltimore Ravens Limited Partnership, et al., MJG-08-397 (Nov. 21, 2008).

In the latest chapter of a decade-long dispute, the District Court of Maryland held on Friday that the Baltimore Ravens, the NFL, and NFL Films are not liable for damages stemming from their use of an infringing logo in public displays, films and memorabilia. The Court found that the defendants’ use of the logo was shielded by fair use.

The Plaintiff, Frederick E. Bouchat, is an amateur artist who drew pictures inspired by comic books. When Bouchat learned in 1995 that the Colts were moving to Baltimore he drew a series of logos for the incoming team. In April 1996, Bouchat faxed the Shield drawing (left) to the President of the Ravens along with a note stating: “If he would like this design if he does use it I would like a letter of recognition and if the team wants to I would like a adiograph[sic] helmet.” Through what the Court labels “a series of misunderstandings,” Bouchat’s drawing was sent to the Stadium Authority’s law office; then to the Ravens’ temporary headquarters; next to the NFL in New York; and finally to the commercial artists working on the project. According to the judgment, the Ravens and the NFL used the logo (right) under the belief that it was an original work.

Bouchat consulted counsel and registered his work shortly after he became aware of the infringing work. In May of 1997, Bouchat filed a copyright infringement action, Bouchat v. Baltimore Ravens, et al., MJG-97-1470. A jury found infringement, which was affirmed on appeal by the Fourth Circuit. In the damages phase of the trial Bouchat’s counsel sought actual damages and additional profits of the infringer. A jury found that there was no profit attributable to the infringement of Bouchat’s copyrighted work, also affirmed on appeal.

Bouchat was unable to seek statutory damages because the infringement of his work occurred prior to the registration of his copyright. See e.g. Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992) (“A plaintiff may not recover an award of statutory damages and attorney’s fees for infringements that commenced after registration if the same defendant commencd an infringement of the same work prior to registration.”)

Bouchat then filed actions against several hundred NFL licensees who sold merchandise bearing the infringing symbol, none of which resulted in damage awards. In this suit, Bouchat sought an injunction against the NFL and Baltimore Ravens from depicting the Flying B Logo in highlight films, action film clips, public displays of memorabilia, and photos. The Court held that the Defendant’s infringement was shielded from liability under fair use:

Purpose and Character: The court found that the defendants’ use was historical and not, “except in the most tangential sense,” commercial. Supporting this finding, the Court included a funny ten-page history of logos used by the colts at the beginning of the opinion.

Nature of the Work: Siding with the plaintiff, the Court found that the nature of the work was not the type that would be copied without express permission.
Amount and Substantially: The Court found that although the logo was included in its entirety it wasn’t a major component of the entire work used, “[w]hether in a display of inaugural season tickets, a photo of a former player or . . . a Raven’s highlight film.”
Potential Effect on the Market: The Court found that there is nothing to indicate that there is any present or foreseeable market for the Bouchat’s work.

__________________

Maryland IP Law has a nice discussion on a previous iteration of this dispute.

Filings: