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    Appropriation as Art: The Arts and Copyright Fair Use

    The exclusive protection of intellectual works encourages and protects the incentive to create, but the law must allow some use of copyrighted materials to advance intellectual creativity. Learn more about fair use, the mechanism for achieving this balance.

    Jennifer Gregor & Mark W. Hancock

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    If “change is the law of life,”1 it presents considerable challenges in law itself. Not only has technology had an enormous effect on the creation of art, it also has substantially affected copyright law. In the electronic age, appropriation is a significant – and controversial – artistic form. Examples are legion: Robert Rauschenberg’s “combine” paintings, Richard Prince’s photographs, Jeff Koons’ sculptures, Shepard Fairey’s “Hope” poster, music sampling, and fanfiction, to name but a few. And technology has only accelerated this trend: anyone with a computer now has access to billions of photographs, songs, films, articles, and books that can be downloaded, copied, manipulated, and repurposed.

    The technology and conceptual underpinnings of appropriation are now so ubiquitous that all artists – both those who embrace the idea and rely on it for their own creations and those who eschew it but whose work might nevertheless itself be appropriated – must be thoughtful about appropriation and its potential legal ramifications. Above all else, this means that artists must be familiar with copyright law’s fair use doctrine.

    Although the four-factor test for fair use seems straightforward, the doctrine is complex and often confusing. This is because courts applying the doctrine sometimes reach inconsistent results and because of the multifarious ways in which new technologies have probed and pierced the boundaries of fair use. The complexity of fair use is exacerbated by the fact that the doctrine must be pliable enough to apply uniformly both across the arts and across other disciplines such as journalism, nonfiction writing, and computer software development.

    This article provides an overview of the current state of fair use law, with a particular focus for artists and lawyers advising artists. We begin with a brief background of the fair use doctrine and then discuss some of the notable fair use decisions in several artistic media. We also discuss some practical tools to assist artists and their counsel in achieving artists’ goals – whether it is protecting copyrights in their own work or understanding the contours of the fair use doctrine for the use of the material of others as inspiration or part of their own work.

    Background of Fair Use

    Fair use is an indispensable aspect of copyright law. On one hand, the exclusive protection of intellectual works encourages and protects the incentive to create. On the other hand, the law must allow some “fair” use of copyrighted materials to advance intellectual creativity. Creative progress occurs by building on the work of predecessors. And certain areas of intellectual activity require critique, review, and examination of prior work. Fair use is the mechanism for achieving this balance.

    Jennifer Gregorcom jgregor gklaw Jennifer Gregor, DePaul 2005, is a shareholder at Godfrey & Kahn S.C., Madison, and cochair of the Intellectual Property Litigation working group. The use of the images in this article constitutes a fair use.

    Mark Hancockcom mhancock gklaw Mark Hancock, Stanford 2007, is an associate at the firm, concentrating in litigation, including intellectual property litigation.

    More than 300 years old, the fair use doctrine has deep roots in the common law. In 1841, in Folsom v. Marsh, Justice Story explained: “In short, we must often … 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.”2

    The 1976 Copyright Act codified fair use, essentially adopting Justice Story’s summary.3 Section 107 of the Copyright Act provides in part as follows:

    “In determining whether the use made of a work in any particular case is a fair use the factors to be 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.”4

    The most recent U.S. Supreme Court decision regarding this four-factor fair use test was Campbell v. Acuff-Rose Music Inc.,5 which is known for solidifying the concept of “transformative use” as part of the analysis under the first statutory factor. In Campbell, the rap group 2 Live Crew took the opening riff and first line of lyrics from Roy Orbison’s song “Oh Pretty Woman” and incorporated them into a new song titled “Pretty Woman,” which was a parody of Orbison’s song.

    The central issue in Campbell was whether this appropriation constituted a fair use. In examining this question, the Supreme Court reviewed the history of the fair use doctrine, including the four statutory factors, and ultimately reversed the Sixth Circuit, holding that a commercial parody can be a fair use.

    The Campbell analysis was the first widely cited mention of the transformative use concept, which was drawn from an influential 1990 law review article by Judge Pierre N. Leval – then on the U.S. District Court for the Southern District of New York and now a senior judge on the Second Circuit Court of Appeals.6 In Campbell, the Supreme Court explained that the transformative use concept asks whether the copy “adds something new, with a further purpose or different character, altering the first [work] with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’”7

    In examining the song at issue, the Court in Campbell concluded that parody “has an obvious claim to transformative value.”8 Crucial to this conclusion was the concept that parody, by definition, comments on the original work.9 Specifically, the Court explained that “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.”10 Satire is different: “satire can stand on its own two feet and so requires justification for the very act of borrowing.”11 Satire, unlike parody, need not mimic the original to make its point.

    Appropriation and Transformation

    Transformative Use. Since Campbell, the transformative use test has come to dominate the legal analysis of appropriation in all artistic disciplines. Take, for instance, the photography of Richard Prince. In the mid-1970s, Prince started taking pictures of photographs. These “re-photographs” were often of advertisements, most famously the cowboys from Marlboro cigarette ads. While Prince’s images are not exact reproductions of the original images, his variations are relatively slight, often just a matter of slight cropping of the photo or a change in tint.12

    As his work developed over the decades, Prince also began incorporating found images into collages. Prince has described his art as an attempt “to change [another artist’s work] into something that’s completely different.”13 To some, Prince’s re-contextualization of images completely transforms their expression; to others, it is little more than artistic theft.

    The law must allow some ‘fair’ use of copyrighted materials to advance intellectual creativity.

    This dispute over the fundamental nature of Prince’s work entered the courts in Cariou v. Prince.14 Cariou involved Prince’s appropriation of various photographs of Rastafarians taken by Patrick Cariou. Prince altered and incorporated into a series of paintings and collages several of these photographs; in some instances, the alterations were as minimal as pasting a few cutouts on top of a Cariou photograph. Cariou sued for copyright infringement based on 30 different pieces made by Prince.

    Following Campbell’sguidance, the trial court rejected Prince’s fair use defense for all 30 works on the grounds that “Prince did not intend to comment on Cariou, on Cariou’s Photos, or on aspects of popular culture closely associated with Cariou or the Photos when he appropriated the Photos.”15

    Cairou collage

    Cariou’s original on the left and derivative work on the right.

    The Second Circuit reversed with respect to 25 of Prince’s 30 works. In doing so, the court emphasized Campbell’s statement that, “to qualify as a fair use, a new work generally must alter the original with ‘new expression, meaning, or message.’”16 The court then catalogued what it determined to be the differences between Prince’s and Cariou’s work, noting aspects such as that Cariou’s photographs were “serene and deliberately composed portraits,” while Prince’s were “crude and jarring.”17 With respect to those 25 works, the court concluded that Prince’s images “have a different character, give Cariou’s photographs a new expression, and employ new aesthetics with creative and communicative results distinct from Cariou’s.”18

    The Second Circuit held that it could not make a definitive determination as to whether the remaining five works were sufficiently transformative to qualify for fair use and remanded that portion of the case to the district court for a determination as to whether “relatively minimal alterations” were transformative.19 One of these five works was Prince’s “Graduation,” which is shown on the right, along with Cariou’s original on the left.

    The Second Circuit’s Cariou decision attracted significant attention from both artists and lawyers concerned that the transformative use inquiry is expanding the scope of fair use. Seeking clarification of the doctrine, Cariou filed a petition for certiorari review by the U.S. Supreme Court, but the Court denied the petition.20

    Derivative Works. Further complicating the transformative use analysis is the fact that one of the exclusive rights provided to copyright holders under section 106 of the Copyright Act is the right to create “derivative works” that are based on the original.21 Derivative works can include works such as “a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.”22 Under this section of the copyright statute, then, some “transformations” of a work are still within the exclusive control of the copyright holder.

    The boundary of fair use with respect to derivative works was tested in Kienitz v. Sconnie Nation LLC in the Seventh Circuit (a case in which the authors represented the plaintiff).23 Michael Kienitz, a professional photographer, owned a registered copyright in his photograph of the mayor of Madison, Wis., Paul Soglin. The defendants, Sconnie Nation LLC and Underground Printing-Wisconsin L.L.C., print and sell novelty t-shirts.

    Paul Soglin and t-shirt

    Kienitz’s original photograph on left, and Sconnie’s t-shirt on right.

    The dispute arose when the Sconnie defendants downloaded Kienitz’s photograph from the Internet and screen printed it on t-shirts in neon colors, with the phrase, “Sorry for Partying.” Sconnie’s shirts did not comment on Kienitz or his work. Rather, the subject was Mayor Soglin and his changed view of the annual Mifflin Street block party in Madison.

    In 1969, when Soglin was a student leader at U.W.-Madison, he was arrested at the first Mifflin Street block party. Over the years, the event became a source of problems for the city because of underage drinking, safety issues, and expense. More recently, as Madison’s mayor, Soglin publicly stated his interest in ending the block party. Below, an image of Kienitz’s original photograph is on the left and the image from Sconnie’s shirt is on the right.

    The Western District of Wisconsin and the Seventh Circuit courts both found Sconnie’s use of the Soglin photograph to be a fair use, but they did so using
    different reasoning. The Western District court cited Cariou and analyzed the statutory fair use factors, although once the court concluded the use was transformative, its analysis of the other factors followed suit.24

    Although the Seventh Circuit affirmed the holding of fair use, the appellate court criticized the transformative use approach from Cariou and chastised the Sconnie defendants.25 Expressing skepticism about the transformative use inquiry, the Seventh Circuit noted that the concept of transformativeness potentially usurps authors’ right to make derivative works under section 106(2) of the Copyright Act.26

    Instead of analyzing the fair use factors in order, the Seventh Circuit focused on two of the four factors.27 As to one of these, the fourth factor, which in this case concerned the market effect of Sconnie’s use, the court concluded that the t-shirts would not harm Kienitz’s market for his original. The court also determined that, in its view, Sconnie’s version of the photo had many differences, albeit as a result of the silk-screening process. The court also criticized the Sconnie defendants for their conduct, explaining:

    “There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many noncopyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under § 107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors.”28

    Given the Seventh Circuit’s criticism of the Cariou approach, many have noted the potential conflict between the Seventh and Second Circuits. Like Cariou, Kienitz petitioned the U.S. Supreme Court for certiorari review, and his petition was denied as well.29

    Thus, for now, the courts, artists, and lawyers are left with a body of precedent and stare decisis to grapple with how to apply the fair use doctrine. This is not an easy task. The fair use analysis is fact specific and unpredictable – no bright-line rules are possible, except in rare cases.

    Book Sequels and Derivative Use. A pair of cases involving book sequels illustrates this well. Under section 106(2), which reserves to authors the right to make derivative works, for instance, one might think that the copyright holder in a novel or film would have the power to control any sequels involving the same characters or plot lines. This was the result for J.D. Salinger, who successfully sued to enforce his copyrights against an unauthorized sequel to The Catcher in the Rye.30

    But not always. Consider the case of SunTrust Bank v. Houghton Mifflin Co.31 In SunTrust, the copyright holder for Margaret Mitchell’s novel Gone With the Wind sued the publisher of Alice Randall’s novel The Wind Done Gone, which appropriated characters, plot lines, and scenes from Mitchell’s story and reimagined the story from the perspective of one of the slaves. The district court preliminarily enjoined the publication of The Wind Done Gone, rejecting the publisher’s fair use defense, but the Eleventh Circuit reversed that decision.

    The transformative use test has come to dominate the legal analysis of appropriation in all artistic disciplines.

    The Eleventh Circuit called the issue of transformation “a double-edged sword:” “On the one hand, the story of Cynara and her perception of the events in TWDG certainly adds new ‘expression, meaning, [and] message’ to GWTW. From another perspective, however, TWDG‘s success as a pure work of fiction depends heavily on copyrighted elements appropriated from GWTW to carry its own plot forward.”32

    Nevertheless, the court ultimately found that The Wind Done Gone was a transformative use: “TWDG is more than an abstract, pure fictional work. It is principally and purposefully a critical statement that seeks to rebut and destroy the perspective, judgments, and mythology of GWTW. Randall’s literary goal is to explode the romantic, idealized portrait of the antebellum South during and after the Civil War.”33 The court concluded that The Wind Done Gone “conscripted elements from GWTW to make war against it” and thus “reflect[ed] transformative value because it ‘can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.’”34

    Other Types of Copying. Despite the Supreme Court’s guidance in Campbell, appropriation and sampling remain issues that are still litigated in all artistic disciplines, including in music, film, and theater. Sampling may involve the question of whether a particular use is de minimis, that is, a “trivial instance of copying,”35 but other situations involve arguable, or even close, questions of fair use. One case that was decisively resolved on fair use grounds involved the use of a seven-second clip of The Ed Sullivan Show that was shown in the Jersey Boys musical, which the Ninth Circuit Court of Appeals deemed “a good example of why the ‘fair use’ doctrine exists.”36 Although, unfortunately, clear cases are sometimes still litigated, this is not unique to copyright law.

    Thus, perhaps the ultimate challenge for the fair use doctrine is that it must be flexible enough to be applied in many different contexts. The fair use analysis also applies to, for example, Google’s project to digitize millions of books. In Authors Guild v. Google Inc., the Second Circuit held that Google’s digitization project was “highly transformative” because “the purpose of Google’s copying of the original copyrighted books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it.”37

    The existence of fair use was also alleged, but ultimately rejected, in a case in which the U.S. Postal Service used photographs of sculptures in the Korean War Veterans Memorial for postage stamps without sculptor Frank Gaylord’s permission.38 And in the Seventh Circuit alone, fair use has been analyzed in cases involving standardized tests,39 collectors’ guides,40 and cartoon parodies.41

    Tools for Artists and Their Counsel

    These examples only begin to suggest the complex and somewhat inconsistent ways in which courts have analyzed transformative use. Although the application of the fair use doctrine is fact specific and there may not be clear answers in many cases, several resources are available to assist artists and their counsel in predicting what is and is not legal fair use. There are also mechanisms built into the Copyright Act that can be helpful to artists. Given the importance of the developing fair use doctrine for artists, artists and their counsel should attempt to be well versed in these resources and tools and to use copyright law to help achieve their goals.

    Resources. Most lawyers are already familiar with the traditional types of organizations that provide pro bono legal services, through law schools, bar associations, and other foundations designed to increase access to legal assistance. Some lawyers, however, are not familiar with organizations that are specifically directed to help artists. There are many volunteer lawyers-for-the-arts organizations throughout the United States, including a well-established organization in Chicago, Lawyers for the Creative Arts,42 for which the authors have volunteered.

    Trade groups for certain types of art professionals can also provide legal assistance to members under certain circumstances. For example, in Cariou v. Prince, discussed above, the American Society of Media Photographers and the Picture Archive Council of America, as well as other organizations, filed amicus briefs in the Second Circuit in support of the interests of their members. Organizations that advocate for arts education, funding, and in some cases, legislation, include Arts Wisconsin and the Wisconsin Arts Board.

    Tools in the Copyright Act. Registration of copyrights can help artists protect their rights. Registrations made within five years after first publication of the work carry a presumption of the validity of the copyright and of the facts stated in the registration certificate.43

    Another powerful, and related, tool that can help artists attempting to enforce copyrights is the Copyright Act’s damages scheme. At the copyright owner’s election, an infringer is liable either for the copyright owner’s actual damages and the infringer’s profits or for statutory damages.44 The Copyright Act authorizes courts to award statutory damages in an amount per work of “not less than $750 or more than $30,000” or if the infringement is willful, up to $150,000.45

    However, copyrights must be registered before a lawsuit is filed involving those rights. And statutory damages and attorney fees can only be awarded for infringements occurring after the effective registration date, unless 1) registration occurred within three months after first publication, or 2) the work was preregistered before the commencement of the infringement and the registration was effective no later than one month after the copyright owner learned of the infringement.46 This means artists should be diligent in registering copyrights for works that may be targeted.

    These provisions may enable artists to more easily fund litigation to enforce their copyrights. In many cases, statutory damages will exceed the infringer’s profits, thus enabling copyright owners with a strong case to potentially cover the costs of enforcing their rights. And litigants with the chance to recover attorney fees may also be better positioned to retain experienced counsel or even retain counsel on a contingency-fee basis.

    Conclusion

    Change is a constant challenge in copyright law. But artists and their lawyers must nevertheless understand the evolving landscape of appropriation and fair use. The Supreme Court’s denial of certiorari in two recent copyright fair use cases and slow legislative action in copyright law means that lawyers advising artists must keep up with fair use case law and trends. Additionally, lawyers advising artists should not overlook the current tools in the Copyright Act that may, in certain circumstances, significantly benefit artists, whether the goal is protecting their rights or having the ability to create based on the works of others.

    Endnotes

    1 John F. Kennedy, Address in the Assembly Hall at the Paulskirche in Frankfurt (June 25, 1963).

    2 Folsom v. Marsh, 9 F. Cas. 342, 348 (C.C.D. Mass. 1841).

    3 H.R. Rep. No. 94-1476, at 66 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5680 (explaining that section 107 “is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.”).

    4 17 U.S.C. § 107.

    5 510 U.S. 569 (1994).

    6 Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990).

    7 Campbell, 510 U.S. at 579.

    8 Id.

    9 Id. at 580.

    10 Id.

    11 Id. at 581.

    12 The work of Sherrie Levine presents a starker example of re-photography. Her “After Walker Evans” series from 1981 presented a series of re-photographs of Walker Evans’ iconic photography from the 1930s, which are essentially indistinguishable from the original images.

    13 Cariou v. Prince, 714 F.3d 694, 699 (2d Cir. 2013).

    14 714 F.3d 694 (2d Cir. 2013).

    15 Cariou v. Prince, 784 F. Supp. 2d 337, 348-49 (S.D.N.Y. 2011), rev’d in part, vacated in part, 714 F.3d 694 (2d Cir. 2013).

    16 Cariou, 714 F.3d at 706 (quoting Campbell, 510 U.S. at 579).

    17 Id.

    18 Id. at 707-08.

    19 Id. at 711.

    20 134 S. Ct. 618 (2013).

    21 17 U.S.C. § 106(2).

    22 17 U.S.C. § 101 (emphasis added).

    23 Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014), cert. denied, 135 S. Ct. 1555 (2015).

    24 Kienitz v. Sconnie Nation LLC, 965 F. Supp. 2d 1042 (W.D. Wis. 2013).

    25 Kienitz, 766 F.3d 756.

    26 Id. at 758.

    27 Id. at 759.

    28 Id.

    29 135 S. Ct. 1555 (2015).

    30 Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010).

    31 268 F.3d 1257 (11th Cir. 2001).

    32 Sun Trust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1269 (11th Cir. 2001) (quoting Campbell, 510 U.S. at 579). 

    33 Id. at 1270.

    34 Id. at 1271 (quoting Campbell, 510 U.S. at 579). 

    35 See On Davis v. The Gap Inc., 246 F.3d 152, 173 (2d Cir. 2001) (“The de minimis doctrine is rarely discussed in copyright opinions because suits are rarely brought over trivial instances of copying. Nonetheless, it is an important aspect of the law of copyright. Trivial copying is a significant part of modern life.”).

    36 SOFA Entertainment Inc. v. Dodger Productions Inc., 709 F.3d 1273, 1280 (9th Cir. 2013).

    37 Authors Guild v. Google Inc., 804 F.3d 202, 216-17 (2d Cir. 2015), cert. denied, 84 U.S.L.W. 3357 (April 18, 2016).

    38 Gaylord v. United States, 595 F.3d 1364 (Fed. Cir. 2010).

    39 ChicagoBd. of Educ. v. Substance Inc., 354 F.3d 624 (7th Cir. 2003).

    40 TyInc. v. Publications Int’l Ltd., 292 F.3d 512 (7th Cir. 2002).

    41 Brownmark Films LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012).

    42 http://law-arts.org/.

    43 17 U.S.C. § 410(c).

    44 17 U.S.C. § 504.

    45 Id.

    46 17 U.S.C. § 412.




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