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Are Transformative Fair Use Principles Foul To Musicians?

[Note: This is part two of a two-part article that was previously posted on NewMusicBox, a site for composers and fans of contemporary classical and other experimental music, on September 17, 2015.]

In my previous post, I sped through the history of fair use from Justice Story to the current statute and strolled through a few examples of the analysis that’s typically used when applying the four factors of Section 107 of the Copyright Act, the statutory test for fair use.

But while courts always construe the statutory factors, the “real” fair use test—at least since the mid-1990s—is nowhere in the statute. Instead, the dispositive inquiry is whether the usage is “transformative.” So, what is “transformative use” and where did it come from?

A) Transformative Use, Music and Parody

The “transformative use” test comes from an influential 1990 Harvard Law Review article by Judge Pierre N. Leval. But since neither articles, books, nor blog posts have any legal effect unless adopted by a court (or legislature), it’s the Supreme Court’s casting of Judge Leval’s concept that defines “transformative use.” In the 1994 case, Campbell v. Acuff-Rose Music, the high court, citing the Leval article in its analysis under the first factor, defined “transformative use” as follows:

The central purpose of this investigation is to see, in Justice Story’s words, whether the new work merely “supersede[s] the objects” of the original creation (“supplanting” the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” (Citations omitted).

If that sounds kind of vague, it is. And while ambiguity is often cultivated in the arts, it’s not so good in a legal standard. And as applied, it sometimes seems like a transformative use of Justice Stewart’s “I know it when I see it” test.

In Campbell, the Supreme Court established that parody can be a form of fair use. The case concerned 2 Live Crew’s use of part of the Roy Orbison hit, “Oh, Pretty Woman,” in their similarly titled song,Pretty Woman,” despite being denied permission for the usage.  The band used the introductory guitar riff and the first part of the chorus before moving on to new material that was deemed to mock the original tune. The Court found that 2 Live Crew’s use of Orbison song was “transformative” in that it did not merely reproduce and appropriate the original composition.

In reaching this conclusion, the Court established guidelines for determining whether a use would be a “parody” in the legal sense, i.e., one for which permission of the copyright owner of the parodied work would not be required: first, only so much as is necessary to conjure up the original work was to be used; and second, the parody must comment in some way on the original work. In other words, it wouldn’t be a “fair use” parody to write new lyrics to an underlying song that talked about something else. And as the Supreme Court noted, a parody protected by fair use need not be funny or artistically successful.

In other words, one can’t write new lyrics to every line in a Michael Jackson song as an ode to multifarious foodstuffs and expect it to be a protected parody. That’s why Weird Al gets permission for his “parodies” even though he obliquely cites fair use on his website.

These principles were more recently applied in Bourne Co. v. Twentieth Century Fox Film Corp., a 2009 decision from the Southern District of New York (district courts being the federal trial courts) involving the Family Guy episode, “When You Wish Upon a Weinstein.” The show featured a song called “I Need a Jew” that used elements of the Disney classic, “When You Wish Upon a Star.” Defendants, including the show’s auteur, Seth MacFarlane, had sought permission from Bourne but were denied.

MacFarlane had the chutzpah to use it anyway and the court concluded that Peter Griffin’s plaintive pleading was a fair use parody of Jiminy Cricket’s crooning in Pinocchio. Relying on Campbell, the Supremes stated: “[t]he Court finds that the new work is transformative; consequently, the first factor weighs in favor of a finding of fair use.”

B) Transformative Use in Dramatic and Visual Arts Cases

But now let’s look at a 2015 parody case from the same court involving another of the performing arts. In Adjmi v. DLT Entertainment, Ltd, the Southern District held that an Off-Broadway stage play, 3C, was a fair use parody of the iconic seventies sitcom, Three’s Company. There, “[t]he parties agree that 3C copies the plot, premise, characters, sets and certain scenes from Three’s Company.” After applying the four factors, the Court held:

The Play is a highly transformative parody of the television series that, although it appropriates a substantial amount of Three’s Company, is a drastic departure from the original that poses little risk to the market for the original.

Apparently, as long as you’re not mocking music, it seems you can take an awful lot of material, including entire scenes, so long as you’re making some sort of statement about the original.

But most fair use cases don’t involve parodies. Moving to the visual arts, Blanch v. Koons, addresses notorious appropriation artist Jeff Koons’s incorporation of—among other images—a cropped, rotated, and altered portion of a copyrighted photograph of a woman’s legs and feet from a shoe ad into a massive collage painting. The Second Circuit (circuit courts being the federal appeals courts between the district courts and the Supreme Court) held that Koons’s use of the magazine ad photo was transformative in that his change of colors, background, media, and size of the objects had an entirely different purpose and meaning from the original, as Koons’s work was commenting on “the social and aesthetic consequences of mass media.”

In the 2013 case Cariou v. Prince, the Second Circuit moved the dial further towards finding transformative (and therefore fair) use in appropriation art. At issue were 35 of Cariou’s black and white photographic portraits of Jamaican Rastafarians that were published in a book and which Richard Prince incorporated into large-scale artwork that altered the images, including cropping, coloring, and obscuring faces with painted “lozenges.” Some of Cariou’s and Prince’s works were reprinted in the court’s opinion. The Court found fair use with respect to 25 of the photos, reversing the district court’s contention that the “transformative use” had to comment somehow on the original photos as in parody cases:

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.

As to the remaining five Cariou photos, the Court noted that “Prince did little more than paint blue lozenges over the subject’s eyes and mouth, and paste a picture of a guitar over the subject’s body.” What’s striking, however, is that even with respect to these uses, the Second Circuit thought that even they could be deemed to constitute fair use and kicked the case back to the district court to make that determination. As we’ll see, the Cariou court’s expansive view of transformative use has its critics.

The Second Circuit has also ruled that the copying of entire posters, albeit in greatly reduced size, in a 480-page coffee table book about the Grateful Dead was fair game. The images appeared along with timelines and commentary about the band. The Court’s opinion stated that “the first fair use factor weighs in favor of [defendant] because [defendant’s] use of [plaintiff’s] images is transformatively different from the images’ original expressive purpose and [defendant] does not seek to exploit the images’ expressive value for commercial gain.” In reaching this conclusion, the Court cited an earlier case which held a search engine’s use of thumbnail reproductions of images was highly transformative. In case you were wondering, this is why I’m pretty sure my reduced-scale cell phone photo of the Chutzpah game reprinted in last week’s post is likely a transformative fair use.

C) A Fair Use Remix: Applying the Standards From Non-Music Cases to Musical Examples

But as this post is running long and my readers’ patience is no doubt growing short, let’s see what happens when we apply standards from these other cases to a few music hypotheticals:

1. As we know, reproducing an entire visual work, although in greatly reduced size, can be considered a transformative, and ultimately fair, use. Now imagine posting an entire John Adams or John Corigliano score, or even the complete sheet music to a Taylor Swift song – in miniature – without permission.

2. We also know from the Three’s Company case that taking entire scenes from a TV show is now fair game if you’re doing a parody of the underlying work. Now envision using a whole scene from an Adams opera or Sondheim musical or an entire Beatles song in a musical parody.

3. We’ve also learned from the appropriation art cases that taking recognizable portions of copyrighted works and creating a collage or visual remix can be a transformative fair use. Now try claiming fair use when taking twenty seconds of a recording of “Satisfaction” or any other famous song and putting it into a film or sampling several snippets of it in your own recording.

4. As was demonstrated in the Koons and Cariou cases, the recasting—including changing the color and background of a work—can be a transformative use. Now picture “recasting” the setting of an orchestral work by “coloring” it for concert band.

I’m guessing that most of my musician readers are chuckling at these, knowing that it would take chutzpah to claim any of the above to be a “fair use” of the music. Working backwards, we call the fourth example making an “arrangement” for which permission is clearly required. The two uses in the third hypothetical are typical examples requiring synch and sampling licenses, respectively. As for the second hypothetical, we know from the Family Guy decision that the more restrictive standard set out in the 2 Live Crew case two decades earlier still applies to musical parodies. And anyone who posts an entire piece of copyrighted music stands a good chance of being subject to a DMCA takedown notice or worse, as reprints of only a few bars are typically licensed.

Mind you, I’ve only cited a handful of the myriad fair use cases and all of them so far have been from courts in New York City. While federal courts throughout the country hear copyright cases, the New York decisions are particularly influential because of the copyright-based industries centered there, such as publishing, music, theater, advertising, and fashion. And not surprisingly, Judge Leval, the progenitor of transformative use, served as a judge both in the Southern District and on the Second Circuit.

If you’ve read my arrangements post you may be thinking that this whole “transformative use” thing sounds a lot like making a “derivative work,” something the copyright owner has the right to grant or deny approval. You’re not alone and last year at least the Seventh Circuit, in finding fair use in another appropriation art case, agreed:

We’re skeptical of Cariou’s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107 but could also override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2). Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2). We think it best to stick with the statutory list, of which the most important usually is the fourth (market effect). [Citations omitted]

[Click here for my more recent and detailed discussion of tranformative fair use versus protected derivative works in light of Judge Leval’s Google Books opinion.]

So why does music seem to have more restrictive standards for fair use than other creative arts? A clue is in the quotes from the cases. With respect to music, there’s a well-established market for these uses, including licensing arrangements, reprints, synchs, and samples, all of which are treated as derivative works. And courts are very reluctant to disrupt the marketplace— even one as dysfunctional as music licensing. This goes back to the first principles of the Copyright Clause, to Justice Story’s fair use test from nearly 175 years ago (“…the degree in which the use may prejudice the sale, or diminish the profits…”) and the fourth factor of Section 107. Ironically, it was the famous Southern District “Thou shalt not steal” case that essentially created the sampling marketplace.

And given the steep decline in mechanical royalties and the paltry payments from streaming, permissions, synch, and sampling uses are among the few areas where musical creators can reasonably be compensated. Do we really want to change this in order to expand fair use? While doing so would greatly enlarge the creative pallet available for new works, it would deny the owners of existing works the fundamental right to say “no” to uses of their works they don’t like and limit the creators of both the underlying and new works to profit from them. Whether or not such a reshaping of the fair use landscape is a good thing or not is a policy debate to be had elsewhere.

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So what does our slog through the thicket of fair use jurisprudence tell us? Clearly, fair use is a continually evolving doctrine and in recent years some courts and commentators have viewed fair use broadly, like a “right” at least as applied to creative works other than musical ones. In fact, in a bit of hot news, on September 14, the Ninth Circuit in California issued a 34-page fair use opinion in the “dancing baby” case, the one where a mom posted a 29-second video on YouTube that showed her toddler dancing to Prince’s song, ”Let’s Go Crazy” and Prince’s publisher, Universal Music, told her to take it down.

The Court held that a copyright owner must consider whether the online usage is protected by fair use prior to sending a takedown notice under the Digital Millennium Copyright Act of 1998 (DMCA). In reaching this decision, the Ninth Circuit confronted the issue of whether a fair use is an “affirmative defense” or a “right” and, at least for purposes of the DMCA, views it more like a right as fair use is “authorized by law.” Of course, any “consideration” of fair use involves application of the detailed analysis discussed above, including the application of “transformative use” under the Section 107 factors and increasingly complicated case law.

So how should one determine if a use is fair or foul? Especially if you’re a musician, you should be guided by the preamble to Section 107 and focus on traditional areas like “criticism, comment, news reporting, teaching, scholarship, or research.” Otherwise, be prepared to seek permission or at least the counsel of an experienced lawyer so that you don’t take a gamble on fair use and make schlimazels of your collaborators, commissioners, publishers, and presenters.

Did the Joker Write the Ninth Circuit’s Batmobile Decision?

In DC Comics v. Towle, the Ninth Circuit recently upheld the district court’s summary judgment determination that the Batmobile, as it appeared in at least two very different iterations created more than twenty years apart, constitutes a single copyrighted “character.” No joke.

The case involved Towle’s creating and selling Batmobile replicas, specifically the car used in the campy 1960s series starring Adam West as the Caped Crusader and the one used in the 1989 feature film starring Michael Keaton. Both the original vehicles and Towle’s replicas are pictured in the appedices to the Court’s opinion, which I strongly encourage my gentle readers to examine before proceeding further.

The Court commenced its learned discourse by exclaiming, “Holy copyright, Batman!” Following that was a discussion of the copyrightability of characters, citing such precedents as James Bond, Godzilla and Batman himself, all of whom have appeared in various guises over the years. Curiously, nowhere does the Court refer to any particular copyright registration for the Batmobile (or even one for any particular comic book issue depicting it, for that matter) despite summarily rejecting Towle’s argument on that point in a footnote.

The Court distilled its discourse on copyright in a character into a tripartite test:

We read these precedents as establishing a three-part test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have “physical as well as conceptual qualities.” Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Considering the character as it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. Third, the character must be “especially distinctive” and “contain some unique elements of expression.” It cannot be a stock character such as a magician in standard magician garb. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard. (Citations omitted).

Now let’s briefly examine how the Court determined that the Batmobile satisfies this standard. The Court found that the Batmobile has “physical as well as conceptual qualities” in that the car is always “sufficiently delineated” in that it’s “equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime” and that is “almost always bat-like in appearance.” The Court also noted that “[n]o matter its specific physical appearance, the Batmobile is a ‘crime-fighting’ car with sleek and powerful characteristics that allow Batman to maneuver quickly while he fights villains.” The Court further stressed: “Equally important, the Batmobile always contains the most up-to-date weaponry and technology.”

Let’s unpack this for a moment by substituting “Buick” for “Batmobile.” Does anyone really believe the state-of-the art technology in a 1966 Buick even remotely resembles that of a 1989 or 2015 model? And while the Batmobile “almost always” has bat-like features, how much does a 1966 Buick Regal bear any resemblance to its 1989 counterpart other than in its name? Or in copyright speak, assuming there was a registration for the design of the 1966 car, what copyrightable elements (expression) are incorporated into the 1989 version to merit it being considered a derivative work of the prior model? Indeed, do the two cars in question in this case look anything alike other than both being long and black? Moreover, the Court noted that Towle’s replicas did not exactly copy the originals used in the TV show and the film, although he did sell kits and accessories to customize the cars to more closely resemble them.

What the Court is describing sounds more like the “idea” of the Batmobile rather than any particular expression of it. The Court’s justification for copyrightable status seems to fly in the face of idea/expression dichotomy, codified in Section 102(b) of the Copyright Act in that ideas can’t be copyrighted, but only the particular expression of them. And that’s the problem in granting copyright protection to characters, especially those with non-speaking roles.

Plaintiff’s tiff with Towle seems to have been driven by his calling his replicas “Batmobiles” and trading upon that name, including using the domain name, batmobilereplicas.com. That, of course, is the province of the trademark law, not that of copyright, as names, titles and short phrases aren’t copyrightable. DC Comic’s complaint, did, in fact, allege trademark infringement and a cursory review of the PTO’s online database shows no fewer than four live registrations under the “Batmobile” moniker.

But assuming the Joker did not write the opinion, the Ninth Circuit hath now decreed that the Batmobile is a copyrighted character. So as the Riddler would say, riddle me this:

Since the Court did not identify any specific copyright registration, how long does the copyright in the Batmobile last? Assuming we can pin a date on any early version, it would seem that an ancient avatar would eventually fall into the public domain, although original, copyrightable features added to later iterations could not freely be used so long as they remained under copyright — at least following the Sherlock-like logic of Judge Posner’s 2014 opinion in Klinger v Conan Doyle Estate, Ltd. In other words, at some point the 1960s Batmobile will be free for joy rides across the public domain while the 1989 model may not be.

And as I’m assaying the character of the Riddler, I’ll throw one out that my criminal colleague, the Joker, would truly enjoy:

We know from the Supreme Court’s decision in Campbell v. Acuff Rose Music, that parody is a form of fair use. And recent decisions have held that in some circumstances entire characters and scenes as well as entire works of visual art can be copied for fair use purposes, including parody. Since we know that Towle didn’t copy the copyrighted cars completely, what if instead of black, he had painted his replicas pink with purple polka dots and called them Clown Caper Cars instead of Batmobiles? Couldn’t that be construed as a comedic commentary on the serious, macho characteristics of the Caped Crusader and his avenging automobile?

And let’s magnify the mischief by assuming that Towle whispers in his buyer’s ear that she can paint the clown car black once it’s paid for and she drives it off the lot. Wouldn’t that be an application of the first sale doctrine under Section 109(b) in that “the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” At least viewed through the lens of the Ninth Circuit’s brand new dancing baby case, a fair use of a work, such as “transforming” it into a protected parody, constitutes a new work that is “lawfully made.” Perhaps a future Special Guest Villain will have better luck if he avails himself of clever legal counsel prior to producing copycat cars.

Finally, if the Batmobile is now a copyrightable character, will Wonder Woman’s bracelets and Thor’s hammer be appearing as characters in cases at a courthouse near you?

Unfortunately, we can’t tune in tomorrow for the solution to these copyright conundrums as they will be riddles for future courts to unravel.

The Broad Comedy and Broader Parody of Three’s Company

What’s worse than sitting through seven episodes of Three’s Company? Reading a federal district judge’s summaries of them. And yet that CliffsNotes analysis, including delving into the cultural significance of the fluffy sitcom, takes up much of the 56-page opinion recently issued by Loretta Preska, Chief Judge of the Southern District of New York. In Adjmi v. DLT Entertainment, Ltd., the court held that plaintiff’s Off-Broadway play, 3C, is a fair use parody of the entire TV series.

Although styled as a Rule 12(c) motion for judgment on the pleadings, the voluminous exhibits to those pleadings included DVDs of all 9 seasons of the series (owned by DLT) as well as Adjmi’s script to 3C, curiously referred to as the “screenplay” throughout the opinion. Judge Preska is no stranger to parody cases, having written the opinion that was affirmed by the Second Circuit in Liebovitz v. Paramount Pictures, which held that a photo of a seemingly pregnant Leslie Nielson of The Naked Gun fame was a fair use parody of the famous Vanity Fair cover of a nude and pregnant Demi Moore.

For you younger readers, Three’s Company, which aired from 1977-1984, focused on Jack Tripper (John Ritter), who pretends to be gay so he can share an apartment with sensible brunette, Janet Wood (Joyce DeWitt) and ditzy blonde, Chrissy Snow (Suzanne Somers, the current TV twirler and former Mistress of the Thighmaster). Rounding out the cast were the nosy neighbor landlords, Mr. and Mrs. Roper.

The Court began its discussion, stating: “[t]he parties agree that 3C copies the plot, premise, characters, sets and certain scenes from Three’s Company.” The parties also agreed that, as in the TV series, the male lead in 3C is an aspiring chef, the blonde is the daughter of a minister and the brunette is a florist. At least the characters’ names are different in plaintiff’s play, although the Court sometimes mistakenly refers to the names of Three’s Company characters in its discussion of 3C. So, there’s undoubtedly access and an awful lot of substantial similarity, the basic elements of a copyright infringement action.

In ruling on the Rule 12(c) motions (plaintiff’s for declaratory judgment and DLT’s on its counterclaim for infringement), the Court stated that discovery, which had been stayed, would not be necessary. Indeed, the decision reads like one for summary judgment as Judge Preska took pains to point out that her opinion is based not so much on the pleadings themselves but on the “raw materials” of the Three’s Company DVDs and the 3C script.

As with any parody case, the Court’s analysis started with the seminal 1994 Supreme Court case, Campbell v. Acuff Rose, which held that 2 Live Crew’s use of a portion of the Roy Orbison hit, Oh, Pretty Woman in the band’s similarly titled song, Pretty Woman, constituted a fair use parody of the work as it only used so much of the original work as was necessary to comment on it. Following Campbell, the Court here went through a fairly rote review of the four fair use factors of Section 107:

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.

And as in Campbell, the Court focused most on the first factor and whether or not Adjmi’s use of the sitcom’s material was “transformative,” citing Judge Leval’s influential 1990 Harvard Law Review Article. As the Supreme Court stated, a use is transformative when “it adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”

However, as I’ve written, the Seventh Circuit recently rejected the “transformative” analysis in fair use cases. In that case, Judge Easterbrook noted that any transformative use would constitute a derivative work, the authorization of which is the right of the copyright owner under Section 106(2) and that it’s best to stick with the four statutory factors.

So, how, exactly is 3C a transformative protected parody of Three’s Company? The main distinction is that in 3C, Brad, the male roommate, is really gay. He’s a gay man pretending to be a straight man who’s pretending to be gay. Got that? Moreover, the Court distinguishes 3C from Three’s Company by focusing on the play’s “heavy” tone, which features drug abuse and Mamet-like use of expletives, including gay-bashing slurs:

There is ample evidence to discern the tone of Three’s Company. It can be described as a happy, light-hearted, run-of-the-mill, sometimes almost slapstick situation comedy…. As demonstrated by select quotations…, 3C proceeds in a frenetic, disjointed and sometimes philosophical tone. It is often difficult to follow and unrelentingly vulgar. The same cannot be said of any episode of Three’s Company.

In other words, 3C is as dreary as Three’s Company is cheery. The Court concludes that “[t]he play is a highly transformative parody of the television series that, although it appropriates a substantial amount of Three’s Company, is a drastic departure from the original that poses little risk to the market for the original.” Fair enough. And having recently failed to sit through a single episode of Three’s Company, even one featuring Loni Anderson, it’s clear to me the show deserves to be parodied.

However, in reaching its conclusion, the Court seems to allow 3C to incorporate far more of Three’s Company than is needed to conjure up the original. In particular, the Court’s view of unprotectable elements like “stock characters” such as a ditzy blonde to include the character’s specific biography — as well as entire scenes lifted from several episodes of the series —  seems unnecessarily broad. The Court also closed with some seemingly “copy-leftist” dicta: “The law is agnostic between creators and infringers, favoring only creativity and the harvest of knowledge.” Say what? The Copyright Act imposes pretty stiff penalties against infringers.

Under this analysis, anything short of pure plagiaristic pilfering of prose would appear to be protected parody so long as the new work somehow “commented” on the prior one. This could have broad implications for other valuable series and their characters, from feature films to fan fiction. Think about applying this standard to the Star Wars franchise, although The Phantom Menace is its own parody.

GoldieBlox and the Beastie Boys: Parody, Piracy or Publicity Ploy

This article was originally posted on the ScoreStreet blog on November 27, 2013.

In case you’ve not tuned into the TV news, the blogosphere or social media in the past couple of days, you may have missed the uproar over a small company’s use of the Beastie Boys’ song Girls in a YouTube video ad that quickly went viral. Goldieblox, which describes itself as “building games for girls to inspire future engineers,” produced a video with young girls using the company’s products in a Rube Goldbergesque contraption. This was set to a re-recording of Girls, sung by young girls with the lyrics changed from the original to one of empowerment.

The Beastie Boys are well-known for refusing to allow their music to be used in commercials and it was widely reported that Adam Yauch had a provision in his will prohibiting such exploitation. So, it wasn’t surprising that Goldieblox did not seek permission to use Girls – particularly in a way that substantially altered the original.

Instead, GoldieBlox felt it was just right to file for a declaratory judgment, seeking a determination in federal court that their use of the song in the commercial did not constitute copyright infringement, claiming  “fair use” in the nature of a “parody.”  There already have been numerous blog posts analyzing the matter to varying degrees.  I simply want to use the Goldieblox – Girls situation to illustrate some fair use principles and to dispel some misconceptions.

First, there is no doubt that the use of the song by GoldieBlox without permission would constitute infringement unless there was a valid defense to the infringement. In that regard, “fair use” is not “right” as some like Larry Lessig and his acolytes have maintained. Rather, it is a defense to copyright infringement.  Moreover, there are no hard and fast rules as to what is, or is not, fair use. For example, it is not automatically a fair use to use 30-seconds or less of a recording or to copy four or fewer bars of a piece of music.  Unfortunately, what constitutes fair use has to be determined on a case-by-case basis in accordance with Section 107 of the Copyright Act, which reads as follows:

§ 107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. 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.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

As for “parody” being a defense to copyright infringement, that was established in the 1994 U.S. Supreme Court decision, Campbell v. Acuff-Rose.  In that case, the band, 2 Live Crew, used a portion of the Roy Orbison hit, Oh, Pretty Woman,” in their song, Pretty Woman, despite having been refused permission by the copyright owner of Oh, Pretty Woman, Acuff-Rose Music.  In that case, the Court went through a lengthy fair-use analysis and found that 2 Live Crew’s use of Oh, Pretty Woman was “transformative” in that it did not merely reproduce and appropriate the original song.

In so doing, the Court set forth guidelines for determining whether a use would be a “parody” in the legal sense, i.e., one for which permission of the copyright owner of the parodied work would not be required. Among the criteria are 1) that only so much as is necessary to conjure up the original, parodied work was to be used and 2) that the parody must comment on the original work. In other words, it would not be a “fair use” parody to write new lyrics to an underlying song that talks about something else. That is why Weird Al gets permission for his “parodies.”  To constitute a parody protected by fair use, the “parody” need not be funny or artistically successful.

How does this apply to the GoldieBlox situation? It has been pointed out that the original Beastie Boys’ song is misogynistic and that the GoldieBlox version changes the lyrics to a message of female empowerment.  However, more than a mere conjuring of the original song was used. Basically, the whole song was used – and to shill a product, however positive the message embodied in the ad may be.

So, is the use a parody protected by fair use? You now have the tools to do your own analysis. My own view is that using substantially all of a song for an advertisement for a product should not constitute fair use. But, as I said, that determination must ultimately be decided by a federal district judge.  And as of now it seems unlikely that will happen. Apparently, GoldieBlox has changed its tune; the company uploaded a new video without music or lyrics and has issued an apology – of sorts– to the surviving members of the Beastie Boys.

Although we may not have a court decide whether the GoldieBlox use of “Girls” was parody or piracy, one thing is absolutely clear: it was a brilliant publicity ploy for the company.

The Good Wife and the Parody Defense

Imagine my surprise when I tuned in to yesterday’s episode of The Good Wife, expecting the usual sexual and political intrigue and found myself in the middle of a copyright infringement case that seemed to have elements of the Supreme Court’s  decision in Campbell v. Acuff-Rose Music (the case where the high court held that 2 Live Crew’s use of the Roy Orbison hit, “Oh, Pretty Woman” was a parody of that 1960s classic), Glee and the recent furor over the Goldiblox ad using The Beastie Boys’ song, Girls. What fun!

Although the technicalities of these types of cases were somewhat glossed over for dramatic effect, things like “parody”, “transformative use”, “derivative copyright” and “compulsory license” were bandied about in the middle of the battle between Alicia Florrick’s client and that of her nemesis, former lover and head of her former firm, Will Gardner.

The fictional case involved a duo that had done a “cover” of sorts of a rap tune where they kept the original rap lyrics but wrote a new melody for the song, “transforming” it into a bouncy pop tune. This version was, in turn, “covered” by yet another artist and was broadcast on a fictional Glee-like show.

Now, those of you who’ve read my previous blog posts both on here and on ScoreStreet, are already familiar with these concepts. But, for you fans of The Good Wife who want to know what all the fuss was about as these legal terms went whizzing by, here’s a brief explanation of some of what was going on in the case where one party was portrayed by F. Murray Abraham (who won an Oscar for his role as the composer, Salieri, in the film, Amadeus), and where the judge was Dominic Chianese, Uncle Junior of The Sopranos  fame and someone who released a recording of Italian songs. Kudos to the casting department for the inside jokes!

The manager for the budding pop duo spoke about getting a “compulsory” license. This, is in fact,  known in the music biz as a “mechanical” license. Typically, a record label (on behalf of its recording artist) obtains this license from the copyright owner of the song to be “covered,” which is usually a music publisher. It is a compulsory license under Section 115 of the Copyright Act in that once a song has been commercially recorded and released, any artist can “cover” that song and the copyright owner  must grant permission (hence, the “compulsory” license), provided that the artist (or more likely, their label) pays the “statutory” rate, which is currently 9.1 cents unit distributed for a song that is 5 minutes or less in duration. So, if an artist sells 100,000 downloads of a song that’s less than 5 minutes long, the record label owes the publisher $9,100.00.

Compulsory mechanical licenses only give the artist rights to make an audio-only recording. And while an artist under the mechanical license can arrange the covered song to his own style, he can’t make fundamental changes such as material alterations to the song’s lyrics. The right to make other uses of the song requires additional rights – as was noted during the show. This is where this “derivative copyright” stuff comes in.

A copyright owner has a “bundle of rights” including the right to make and distribute copies and to create – or authorize others to create – “derivative works.” What’s a derivative work? You can look it up in Section 101 of the Copyright Act, but arrangements, translations, adaptations and the like are derivative works. For example, making a film from a novel is creating a derivative work of that novel. So is making a video of a song or doing a new arrangement of a song, such as keeping the lyrics but writing an entirely new melody to them, as was done in The Good Wife. Such derivative uses are often viewed as being “transformative,” in that the new work has recast and re-purposed the original work.

Most derivative uses of a copyrighted work need to be authorized or licensed by the copyright owner of the underlying work. For example, if a producer wants to use a hit song in an upcoming TV show, they need to get a “synchronization” license from the copyright owner of the song (typically, a music publisher) and permission from the copyright owner of the recording of that song (typically, the artist’s label).

However, there is an exception under the doctrine of “fair use” for a “parody” of a work. An artist may use another’s copyrighted work without permission if the new work  is commenting in some manner on the underlying original, as was held to be the case with 2 Live Crew and “Oh, Pretty Woman.”  Such a “parody”  is said to be a “transformative” use of the work, and under certain circumstances, no permission would be required and the use, even without permission, would not constitute copyright infringement.

But there’s a catch:  what was not made clear in last night’s episode, probably for dramatic purposes, is that in order to have a fair use “parody” of the work, one can only use so much of the underlying work as to “conjure” the original. One cannot simply take the entire underlying work and use it wholesale, such as taking an entire lyric and writing a new tune to it. In the “Oh, Pretty Woman” case, 2 Live Crew only used a portion of the original song and the rest was original material, thereby creating a “transformative” use of the Orbison hit. Got that?

Who knew that copyright and music licensing could be so dramatic!

Why The Obama Big Bird Ad’s Going Bye-Bye

Since last week’s Presidential debate, Big Bird’s eight-foot high profile has grown even larger.  It started with a comment that Republican contender, Gov. Mitt Romney, made to the moderator, Jim Lehrer of PBS , about cutting federal funding for PBS programs, including Lehrer’s own NewsHour and Sesame Street. Mr. Romney specifically singled out Big Bird for the budget ax.  Thereafter, Big Bird, who claims he’s normally in bed well before 11:30 p.m., made a guest appearance on Saturday Night Live’s Weekend Update to address the issue.  Being non-partisan, however, Mr. Bird declined to make any political pronouncements, stating, “No, I don’t want to ruffle any feathers.”

Unfortunately, he’s managed to do so, courtesy of a TV ad from President Obama’s campaign.  Prominently featuring Big Bird and the familiar green Sesame Street  sign, the ad has a satiric quality to it that one doesn’t typically see in Presidential campaign ads. It seemed, at least to me, more like one of the fake ads produced by Saturday Night Live. But it’s real and Sesame Workshop, the company that owns the rights to Sesame Street and its many characters, made it known that they are not amused.

Sesame Workshop’s demand that the Obama campaign cease using the Big Bird ad has been widely publicized.  But you might well ask, “doesn’t the President’s campaign have a First Amendment right to use Big Bird?” After all, “political speech” is the very core of our right to free speech.  And wouldn’t the use of Big Bird constitute “fair use” under copyright law? Wouldn’t it be considered a protected “parody”?

Well, probably not. Let’s first look at “fair use,” something that’s often misunderstood. Much ink has been spilled in recent years over so-called “fair use rights.” Actually, “fair use,” which is codified in Section 107 of the Copyright Act, is a defense to copyright infringement – not a “right.” And one of the purposes of “fair use” is to balance first amendment speech rights with copyright law’s limited monopoly.  Section 107 does state that use of a work may be “fair use” when used “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research….” Moreover, the courts have repeatedly held that there are no black line rules for determining fair use and that each decision is to be made on a case-by-case basis through an analysis of Section 107’s four factors. These include the “the purpose and character of the use”, such as whether it’s a “commercial use” and how much of the underlying work is used in the allegedly infringing work.  More recent cases also look to see if the use is “transformative,” meaning that the underlying work is not merely reproduced but is used in a new way.

One thing’s clear: just because it’s a political ad doesn’t mean you can use someone else’s copyrighted work.  The First Amendment guarantees free speech, but it doesn’t give you the right to freely use someone else’s speech.  A few years ago, Joe Walsh of The Eagles sued Joe Walsh the Congressional candidate over the use of one of his songs in a TV ad.  Many composers won’t allow their works to be used for political purposes. For example, Aaron Copland’s estate won’t allow the use of the iconic “Fanfare for the Common Man” to be used in political campaigns. A few years ago, when I was at Boosey & Hawkes, I was able to slap Comedy Central on the wrist for an unauthorized use of the Copland anthem on The Daily Show that was discovered by my staff. The result: a hefty license fee and some tickets to a taping of the show.

So what about the Big Bird ad? The use of the clip of Gov. Romney from the Presidential debate is likely  a fair use. It’s a short clip of a public, newsworthy event and the ad is commenting on Gov. Romney’s views and criticizing them.  With respect to Big Bird, it’s a bit more tricky.  He’s not the subject of the criticism, but his name and likeness is being used to criticize Gov. Romney’s statements.  And there’s an awful lot of Big Bird in the ad.

But, isn’t it a “transformative” use? After all, parody is one of the uses that may be considered transformative.  But, sometimes a parody is not a parody in the legal sense. The 1994 Supreme Court case of Campbell v. Acuff-Rose Music, Inc. (involving 2 Live Crew’s unauthorized use the Roy Orbison hit, “Oh, Pretty Woman” in one of its songs) and many subsequent cases, hold that a new work is a protected parody under copyright law only when it is commenting on, i.e., parodying, the underlying original work.  In the 2 Live Crew case, the Supreme Court found that the rap group’s song did, in fact, comment upon the Orbison hit.  In the Obama ad, it appears that the parody is directed not at Big Bird (the underlying copyrighted work), but at Gov. Romney. That would tend to defeat the parody defense. For example, it’s not a legally protected “parody” if you take a popular song and merely change the lyrics to comment on some topical issues of the day as opposed to scorning the song itself. But what about Weird Al Yankovic? Actually, Weird Al gets permission from the copyright owners of the songs he “parodies.”  And, as the Supreme Court noted in the 2 Live Crew case, the parody doesn’t have to be either good or funny.

So, it’s murky at best under copyright law as to whether the Obama campaign can use Big Bird in its ad without permission.  But it doesn’t end there. Remember the “Sesame Street” street sign? Sesame Workshop has a trademark in that famous logo.  Not surprisingly, there’s a “fair use” provision in the federal trademark act (that’s Section 33(b)(4) of the Lanham Act for you footnote freaks) and the courts construing it typically consider three factors, including whether the use of the mark suggests sponsorship or endorsement by the owner of the trademark.  Under that test, it looks like Sesame Workshop has a legitimate gripe about the use of its trademark “endorsing” the President’s position.

And remember, I mentioned the use of Big Bird’s “name and likeness.” That’s typically an area of law known as the right of publicity, which allows celebrities, often very dead ones, to make lots of money off of their name and likeness and to prevent others from cashing in without their consent.  However, unlike copyright and trademark, the right of publicity is a matter of state law, not federal law, and every state’s law is different. And while I know of cases where actors portraying fictional characters have successfully made publicity claims (e.g., George Wendt and John Ratzenberger suing over a “Norm” and “Cliff” robot impersonators), I’m not aware of any right of publicity cases involving characters such as the likes of Big Bird, Mickey Mouse or Spiderman.

So, the Big Bird ad, on intellectual property law grounds, is likely to fly the coop. However, that’s not why it’s going bye-bye. While I’m sure the lawyers working for the Obama campaign know that they’re not on solid ground, the Sesame Workshop folks aren’t likely to file a lawsuit. For one, Sesame Workshop’s gotten a lot of favorable free publicity.  But more importantly, the Big Bird brouhaha has a shelf life that will last only until the October 11 Vice Presidential debate and I suspect both sides know this and don’t want to spend a lot of money fighting over something so ephemeral.  Even if there weren’t any legal issues, I’d be very surprised if the Big Bird ad continues to air after this week, by which time it’ll be as fresh as last week’s leftover chicken.