FAIR USE-EVEN MORE ISSUES

IVAN HOFFMAN, B.A., J.D.


        I have written extensively about fair use in the copyright law (see the other articles collected in “Articles for Writers and Publishers” or “Articles for Web Site Designers and Site Owners”).  The Ninth Circuit Court of Appeals has decided a case in which these issues are discussed in further detail.  The case, Elvis Presley Enterprises, Inc. et. al. vs. Passport Video et. al.,  had the following facts, in summary:

        The various plaintiffs were owners of a number of rights of copyright in music, videos, television shows, photographs and the like.  The Court described the defendants as follows:

Passport Entertainment and its related entities (collectively “Passport”) produced and sold The Definitive Elvis, a 16-hour video documentary about the life of Elvis Presley. The Definitive Elvis sold for $99 at retail. Plaintiffs allege that thousands of copies were sent to retail outlets and other distributors. On its box, The Definitive Elvis describes itself as
an all-encompassing, in-depth look at the life and career of a man whose popularity is unrivaled in the history of show business and who continues to attract millions of new fans each year. This groundbreaking, sixteen-hour series is brimming with classic film clips, rare home movies, [and] never-before seen photos . . .
Every Film and Television Appearance [in bold in the quote] is represented in this series as well as Rare Footage Of Many of Elvis’ Tours & Concerts [in bold in the quote]
(emphasis in original).
        The defendants claimed that they had spent over $2 million developing and marketing the package.  The defendants had not obtained any licenses from any of the plaintiffs to use the respective plaintiffs’ copyrighted materials, although they had sought a license from at least the Presley estate but were denied.  The main issue on appeal from the trial court’s grant of a preliminary injunction barring defendants from selling or distributing the package was whether or not the uses of such copyrighted material were protected under the fair use section of the United States copyright law. (The Court summarily dismissed other arguments raised on appeal by the defendants and I will not discuss those arguments in this article.)

        The Court analyzed the use of the respective materials since merely reciting the 4 factor test (read “Fair Use” on the link above) does not, in itself, answer the question.  Fair use is a context-sensitive determination.

        The Court stated:

This analysis should not be “simplified with bright-line rules,” but instead requires a “case-by-case analysis.” Los Angeles News Serv. v. CBS Broad., Inc., 305 F.3d 924, 938 (9th Cir. 2002), amended by 313 F.3d 1093 (2002) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577-78 (1994)). Contrary to the divide and conquer approach taken by the dissent, we may not treat the factors in isolation from one another. “All are to be explored, and the results weighed together, in light of the purposes of copyright.” Los Angeles News Serv., 305 F.3d at 938. See also Kelly v. Arriba, 366 F.3d 811, 822 (9th Cir. 2002).
The Purpose and Character of the Defendant’s Work.

        The Court found that although the project was clearly a commercial venture, such use alone is not determinative since commercial uses can also be protected by fair use and commercial use is just one factor to be considered.  The Court said:

And the degree to which the new user exploits the copyright for commercial gain—as opposed to incidental use as part of a commercial enterprise—affects the weight we afford commercial nature as a factor.
        The Court went on to state:
More importantly for the first fair-use factor, however, is the “transformative” nature of the new work. Campbell, 510 U.S. at 579; CBS Broadcasting, 305 F.3d at 938. Specifically, we ask “whether the new work . . . merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message . . . .” Campbell, 510 U.S. at 579 (citation and quotation marks omitted). The more transformative a new work, the less significant other inquiries, such as commercialism, become. Id.
        [For a further discussion of “transformative” uses, read the discussion about this in both the Seinfeld and Wind Done Gone cases, in “The Seinfeld and Wind Done Gone Cases: Studies in Fair Use.”]

        The Court discussed 2 other cases which contained similar uses.

Two district courts have found that the use of film clips in biographies is transformative. In Monster Communications, Inc. v. Turner Broadcasting System, Inc., 935 F. Supp. 490, 491 (S.D.N.Y. 1996), the district court considered whether a movie biography about Muhammad Ali violated the plaintiff’s copyrights in video footage that was used in the boxer’s biography for less then two minutes. The court found that the biography, while commercial, “constitutes a combination of comment, criticism, scholarship and research” concerning “a figure of legitimate public concern” and thus the purpose and character of the biography weighed in favor of fair use. Id. At 493-94 (citation and quotation marks omitted).

In Hofheinz v. A&E Television Networks, 146 F. Supp. 2d 442, 444 (S.D.N.Y. 2001), the court considered whether A&E’s use of copyrighted film clips for a biography of actor Peter Graves was fair use. The court found that the biography was transformative because use of a movie trailer clip for a “B” movie “was not shown to recreate the creative expression reposing in plaintiff’s film.” Id. at 446. The biography narrator introduced the movie clip as outdated and “campy.” Id. At 444. Its purpose was to “enabl[e] the viewer to understand the actor’s modest beginnings in the film business.” Id. at 446-47.

        The Court analyzed the factors in this case and stated:
First, Passport’s use, while a biography, is clearly commercial in nature. But more significantly, Passport seeks to profit directly from the copyrights it uses without a license. One of the most salient selling points on the box of The Definitive Elvis is that “Every Film and Television Appearance [in bold in the quote] is represented.” [emphasis supplied] Passport is not advertising a scholarly critique or historical analysis, but instead seeks to profit at least in part from the inherent entertainment value of Elvis’ appearances on such shows as The Steve Allen Show, The Ed Sullivan Show, and The 1968 Comeback Special.[emphasis added] Passport’s claim that this is scholarly research containing biographical comments on the life of Elvis is not dispositive of the fair use inquiry.

Second, Passport’s use of Plaintiffs’ copyrights is not consistently transformative. True, Passport’s use of many of the television clips is transformative because the clips play for only a few seconds and are used for reference purposes while a narrator talks over them or interviewees explain their context in Elvis’ career. But voice-overs do not necessarily transform a work. See L.A. News Serv. v. KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir. 1997). “ ‘There must be real, substantial condensation of the materials . . . and not merely the facile use of scissors; or extracts of the essential parts, constituting the chief value of the original work.’ ” CBS Broad., Inc., 305 F.3d at 939 (quoting Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D. Mass. 1841) (Story, J.)). [emphasis added]

It would be impossible to produce a biography of Elvis without showing some of his most famous television appearances for reference purposes. But some of the clips are played without much interruption, if any. The purpose of showing these clips likely goes beyond merely making a reference for a biography, but instead serves the same intrinsic entertainment value that is protected by Plaintiffs’ copyrights. [emphasis added]

We think Passport’s use of significant portions of The Steve Allen Show is especially troubling. While showing a clip from these television shows is permissible to note their historical value, Passport crosses the line by making more than mere references to these events and instead shows significant portions of these copyrighted materials. [emphasis added] Finally, Passport does not even offer up a specific justification regarding its use of Plaintiffs’ copyrights in still photographs and music.

        The Court concluded as to this issue:
We need not decide how we would resolve this factor were we to review it de novo. For our inquiry is simply whether the district court abused its discretion. The district court’s decision that the first factor weighs against fair use was not based on an erroneous legal standard or clearly erroneous factual finding. See A&M Records, Inc., 239 F.3d at 1015.
The Nature of the Copyrighted Work

        The Court stated:

For example, works such as original songs, motion pictures, and photographs taken for aesthetic purposes, are creative in nature and thus fit squarely within the core of copyright protection. See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 455 n. 40 (1984); Kelly, 336 F.3d at 820. But works such as news broadcasts and news video footage are more factual in nature and thus are more conducive to fair use. See Sony, 464 U.S. at 455 n. 40; KCAL-TV, 108 F.3d at 1122.
        The Court found that although the television footage was a “close call” and if the footage was considered “newsworthy” that might weigh in favor of the defendants, the use of the songs and photographs in the project was clearly not subject to the fair use defense.
The pictures, in most instances, do not depict newsworthy events, nor are the pictures inherently newsworthy, but instead comprise the photographer’s artistic product.  Moreover, it is undisputed that original musical compositions are inherently creative.
        Here, too, the Court found that the trial court had not abused its discretion in issuing the preliminary injunction.

The Amount and Substantiality of the Work Used

The third factor is the amount and substantiality of the portion used in relation to the copyrighted work as a whole. This factor evaluates both the quantity of the work taken and the quality and importance of the portion taken. Campbell, 510
U.S. at 586. Regarding the quantity, copying “may not be excused merely because it is insubstantial with respect to the infringing [word in italics in original] work.” Harper & Row, 471 U.S. at 565 (emphasis in original). But if the amount used is substantial with respect to the infringing work, it is evidence of the value of the copyrighted work. Id. Regarding the qualitative nature of the work used, we look to see whether “the heart” of the copyrighted work is taken—in other words, whether the portion taken is the “most likely to be newsworthy and important in licensing serialization.” Campbell, 510 U.S. at 586; see also CBS Broad., 305 F.3d at 941. Finally, if the new user only copies as much as necessary for his or her intended use, this factor will not weigh against the new user. Kelly, 336 F.3d at 820- 21. [emphases added]
        The Court again deferred to the trial court in this matter finding that it did not abuse its discretion in issuing the injunction.
Passport’s use of clips from television appearances, although in most cases of short duration, were repeated numerous times throughout the tapes. While using a small number of clips to reference an event for biographical purposes seems fair, using a clip over and over will likely no longer serve a biographical purpose. Additionally, some of the clips were not short in length. Passport’s use of Elvis’ appearance on The Steve Allen Show plays for over a minute and many more clips play for more than just a few seconds.

Additionally, although the clips are relatively short when compared to the entire shows that are copyrighted, they are in many instances the heart of the work. What makes these copyrighted works valuable is Elvis’ appearance on the shows, in many cases singing the most familiar passages of his most popular songs. Plaintiffs are in the business of licensing these copyrights. Taking key portions extracts the most valuable part of Plaintiffs’ copyrighted works. With respect to the photographs, the entire picture is often used. The music, admittedly, is usually played only for a few seconds.

Effect on the Market for the Copyrighted Work

        Finally, the Court considered this factor, which it called “undoubtedly the single most important” factor, stating:

First, Passport’s use is commercial in nature, and thus we can assume market harm. See id. Second, Passport has expressly advertised that The Definitive Elvis contains the television appearances for which Plaintiffs normally charge a licensing fee. If this type of use became wide-spread, it would likely undermine the market for selling Plaintiffs’ copyrighted material. This conclusion, however, does not apply to the music and still photographs. It seems unlikely that someone in the market for these materials would purchase The Definitive Elvis instead of a properly licensed product. Third, Passport’s use of the television appearances was, in some instances, not transformative, and therefore these uses are likely to affect the market because they serve the same purpose as Plaintiffs’ original works.

We do not think this factor weighs strongly in either side’s favor. But, for the reasons stated above that support the district court’s decision, we cannot say that the district court abused its discretion in analyzing this factor. Furthermore, because we do not see any legal error or clear error in the district court’s factual findings underlying any of the fair-use factors, we hold that the district court did not abuse its discretion in granting the preliminary injunction.

Conclusion

        As I have indicated many times in these articles, a party should always obtain a license to use protected materials.   As indicated above, the defendants had sought a license from at least the Presley estate but were denied and proceeded with the project.   By definition, the fair use defense only arises when a party has been sued and the last thing a party wants is to be sued.  Since it is exceptionally difficult to tell in advance with any degree of certainty whether a given use is going to be held to be a fair use or not, reliance on this defense is legally very uncertain and quite risky.

        As the Court said:

We emphasize that our holding today is not intended to express how we would rule were we examining the case ab initio [from the start] as district judges.
        Thus the Court was saying that it might have ruled differently under the same facts.  Indeed, there was a dissent in the case and the essence of the dissenting Justice’s position was that there were mistakes of fact and the application of the law to those facts and this should have precluded the issuance of an injunction and instead the case should have been the subject of a possible award of damages in the event the plaintiff’s prevailed (instead of an injunction).  As but one example, the dissenting Justice would have given more weight to the voice overs in the project in terms of a finding of “transformative” uses.  As another example, the dissenting Justice would have given more weight to the nature of the uses made of the photographs and the music as background materials.

        The importance here is that even looking at the same set of facts, all these Justices and the trial judge came up with different or might have come up with different results, all of whom were looking at the same facts and all of whom knew the same law.  In other words, there can be a great deal of subjectivity even within the objective recitation of the 4 factors that are fair use.

        Therefore, any party seeking to rely on the fair use defense runs the substantial risk of guessing wrong.  Guessing wrong and not licensing means that, irrespective of the outcome, a litigation generally follows with all of the attendant costs, expenses, potential damages and other party attorney fees and so on, not to mention the often hidden costs of loss of other opportunities, loss of sleep and so on.  Litigation is an example of remedial law-of “fix me” law.

        Licensing, on the other hand, is an example of preventative law-of “help me” law.  For the benefits of licensing as compared to relying on fair use, read “Screen Shot Liability for Computer Book Authors.”

        Help me is almost always cheaper than fix me.

Copyright © 2003 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

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