Copyhype

A number of interesting and potentially important fair use decisions have been released by courts in the past several months. I had originally planned on discussing all in one fell swoop, but as I started writing about the first of these decisions, Cariou v. Prince, released last April, the article started getting a bit long, so I’ll save discussion of other recent fair use decisions for later.

Fair Use and Transformativeness

As many readers know, fair use is a central concept in U.S. copyright law, and is recognized in the Copyright Act at 17 U.S.C. § 107. The doctrine was originally developed by courts as a rule of reason to allow privileged use of copyrighted works under certain circumstances. ¹See H.R. REP. NO. 94-1476, at 65 (1976). As stated in § 107, those circumstances can include “criticism, comment, news reporting, teaching…, scholarship, or research.” Whether a use is fair or unfair also generally requires a look at four factors: (1) the purpose and character of the use, (2) the nature of the work being used, (3) the amount and substantiality of the portion used, and (4) the effect of the use on the potential market of the original work.

In 1990, Judge Pierre Leval, formerly a federal judge in the Second Circuit Court of Appeals, wrote Toward a Fair Use Standard, which has since become highly influential in shaping the fair use inquiry into one that focuses primarily on “transformativeness.” Judge Leval wrote:

The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test; in Justice Story’s words, it would merely “supersede the objects” of the original. If, on the other hand, the secondary use adds value to the original–if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings– this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.

Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses.

The existence of any identifiable transformative objective does not, however, guarantee success in claiming fair use. The transformative justification must overcome factors favoring the copyright owner. A biographer or critic of a writer may contend that unlimited quotation enriches the portrait or justifies the criticism. The creator of a derivative work based on the original creation of another may claim absolute entitlement because of the transformation. Nonetheless, extensive takings may impinge on creative incentives. And the secondary user’s claim under the first factor is weakened to the extent that her takings exceed the asserted justification. The justification will likely be outweighed if the takings are excessive and other factors favor the copyright owner.

The Supreme Court would adopt Leval’s transformative framing in Campbell v. Acuff-Rose Music, 510 US 569 (1994), and it has continued to serve as a jumping off point for discussions of fair use by courts and commentators since, including the Second Circuit in Cariou.

Cariou v. Prince

Cariou began with the use, without permission, of a set of photographs by appropriation artist Richard Prince. The photos at issue come from a 2000 book Yes Rasta, and were taken by Patrick Cariou over the course of six years as he lived and worked among Jamaican Rastafari. Prince happened across the book and began using dozens of them to create new works by, for example, pasting other pictures on top or painting colored “lozenges” over certain portions. Boom. Art.

Cariou sued, and the district court rejected Prince’s fair use defense, specifically his argument that using copyrighted works as “raw ingredients” to create new works is per se fair use. To the contrary, said the court, fair use requires some form of transformative comment on the original work — “all of the precedent this Court can identify imposes a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works.” The precedent is also consistent with the language of the fair use provision in the Copyright Act itself. As the district court noted, “the illustrative fair uses listed in the preamble to § 107 — ‘criticism, comment, news reporting, teaching […], scholarship, [and] research’ — all have at their core a focus on the original works or their historical context.” A work which merely “transforms” an existing work, with nothing more, is a derivative work, the creation of which is exclusive to the copyright owner of the existing work. ²17 U.S.C. § 106(2).

The transformative inquiry fell under the district court’s analysis of the first fair use factor; the court also found that the commerciality of Prince’s use and his bad faith — Prince had neither sought permission nor licensing from Cariou — meant the first prong weighed heavily against fair use. Prince did not fare better under the other fair use factors: Cariou’s photos were highly creative, Prince copied substantially more of Cariou’s photos than necessary (including, in some cases, the entire work), and his secondary use unfairly damaged the original market for Cariou’s photos.

The Second Circuit reversed the district court’s decision, pulling what one commentator called “a complete about-face from traditional transformative use analyses.” It rejected the requirement that the first factor requires some sort of connection to the original work. Said the court, “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.” Instead, it is enough that the new work merely “alter the original with ‘new expression, meaning, or message.'”

The Second Circuit also rejected the district court’s holding on the fourth factor, the effect of the new use on the potential market of the original work. Richard Prince sells his works for millions of dollars to people like “Tom Brady… Gisele Bundchen… Robert DeNiro, Angelina Jolie, and Brad Pitt,” remarked the court, while Cariou has sold prints of his photos primarily to family members and acquaintances.

Mitigating the effect of the second prong of the fair use inquiry, and dialing back the district court’s emphasis on the “amount and substantiality” that Prince used, the Second Circuit held that 25 of Prince’s works that used Cariou’s photos were fair use. It remanded five photographs to the district court for further inquiry, deciding that they presented too close a question of fair use on the test it used. This last act drew a dissent from Judge Wallace, who wrote that once the Second Circuit stated its new legal test for transformative uses, it should have sent all thirty photos back to the district court to determine if the uses were ultimately fair. Said Wallace, “Certainly we are not merely to use our personal art views to make the new legal application to the facts of this case.”

Altering Campbell v. Acuff-Rose with “new meaning”

Regardless of your feelings about whether the outcome of the Second Circuit’s new test is good or bad, it must be noted that it directly contradicts Supreme Court precedent — ironically, the same precedent the Circuit uses to justify its holding. In Campbell v. Acuff-Rose Music (mentioned earlier), the Supreme Court did not hold, as the Second Circuit said it did, that it is sufficient under the first fair use factor for a new work to merely “alter the original with ‘new expression, meaning, or message.'” Instead, the Court said — in holding that parody has transformative value — “the heart of any parodist’s claim to quote from existing material[] is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works” (emphasis added). The Court continued:

If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

The above passage makes it clear that the Second Circuit disregarded the Supreme Court’s direction on transformativeness. That Prince was using Cariou’s photos as raw materials to “avoid the drudgery in working up something fresh” rather than building upon them seems readily apparent, especially given Prince’s own testimony during the trial that he “‘do[es]n’t really have a message,’ that he was not ‘trying to create anything with a new meaning or a new message,’ and that he ‘do[es]n’t have any . . . interest in [Cariou’s] original intent.'”

Note that Campbell‘s definition of transformativeness isn’t an aesthetic judgment — there is nothing wrong with using existing works as raw materials in creating new works, and appropriation art is no less capable of respect or meaning than original works; it’s just that permission or licensing is required to use the existing work. ³Indeed, Laura Gilbert of The Art Newspaper has reported that since the 1960s, most well-known appropriation artists (including Andy Warhol) have been in the practice of licensing the underlying works they rely on. See also Thomas W. Joo, Remix Without Romance, 44 Connecticut Law Review 415 (2011), who explains that licensing of digital samples has been the prevalent industry practice in the music business for decades.

The Second Circuit did not just ignore Supreme Court precedent on the major point of transformativeness, it also ignored it when it looked at the third fair use factor, which considers the amount and substantiality of the original work taken. Citing to the Supreme Court’s Campbell decision, the Second Circuit said, “the law does not require that the secondary artist may take no more than is necessary.” To the contrary, the Campbell absolutely said this. The caveat being that, because of the nature of parody, this “no more than necessary” taking may include a substantial portion or the “heart” of the work — “the parody must be able to ‘conjure up’ at least enough of that original to make the object of its critical wit recognizable.”

But the requirement that the secondary artist take no more than necessary is still there. As the Court went on to say (and consistent with the requirement that a transformative use have a focus on the original work to be fair), “Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song’s overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original.” The Supreme Court agreed that the copying of lyrics was fair precisely because “no more was taken than necessary.” But, it should be pointed out, it remanded to the lower court to determine whether 2 Live Crew’s copying of the bass riff in the original work was excessive. According to a contemporaneous article on the decision in the Memphis Commercial Appeal, the two parties settled after the Supreme Court ruling, with both parties agreeing to a license.

Toward a Fair Use Standard?

At its core, fair use is a necessary aspect of copyright, playing a critical role in maintaining the right’s proportionality and public benefit. The Copyright Office wrote in its 1958 copyright law revision study on fair use:

It has often been stated that a certain degree of latitude for the users of copyrighted works is indispensable for the “Progress of Science and Useful Arts.” Particularly in the case of scholarly works, step-by-step progress depends on a certain amount of borrowing, quotation and comment. ⁴Alan Latman, Fair Use of Copyrighted Works, Copyright Office, Copyright Law Revision Study No. 14, pg. 7.

The Second Circuit’s decision in Cariou, aside from ignoring Supreme Court precedent, loses sight of that purpose. One observer remarked:

Regardless of how little is necessary to transform a work into something new, though, the purpose of copyright law and the very incentive it gives to originators to create would be lost if another entity could take a whole work, add a mustache, sell it as the entity’s own, and evade copyright infringement. ⁵Jennifer Gilbert-Eggleston, Cariou v. Prince: Painter or Prince of Thieves? 11 U. Denv. Sports & Ent. Law J. 117, 124 (2011). See also Zehra Abdi, Morris v. Guetta: Are Appropriation Artists Getting A Free Pass by the Second Circuit?, CDAS Blog (May 28, 2013): “the Second Circuit has expanded the meaning of transformative use in the area of appropriation art so greatly that it essentially gives one artist permission to use even a substantial body of another artist’s work as in Cariou, merely for convenience.”

Fair use should be called upon when requiring permission would impede the progress of the useful arts. Cariou flips this long-standing principle on its head by simply asking whether unlicensed use would promote the progress of the arts. It’s a subtle yet fundamental distinction.

In June, the Second Circuit denied Cariou’s petition to rehear the case. It remains to be seen whether Cariou will try to take his case to the Supreme Court, which would put the issue of fair use — and transformativeness — in front of the Court for the first time in almost thirty years. Getting to the Supreme Court, of course, is always a long shot, so it may be that the Second Circuit’s decision will remain the law.