FAIR USE: Even More Issues: Follow Up


        In “Fair Use: Even More Issues,”  I discuss the case of Elvis Presley Enterprises, Inc. et. al. vs. Passport Video et. al.  Because the legal doctrine in the copyright law of fair use is vague and uncertain in the extreme and because virtually no one can tell you in advance whether anything is going to be held to be a fair use or an infringement, let me here discuss the case of Bill Graham Archives vs. Dorling Kindersley Limited, Dorling Kindersley Publishing, Inc. and RR Donnelley & Sons Company, a decision from the Second Circuit Court of Appeals that deals with fair use but arrives at a different conclusion than the Presley case and indeed cites to and distinguishes the Presley case from the one before this court.

        For those who were living on Jupiter during the 1960’s and following decades, Bill Graham was one of the giants of the music business.  He was an internationally known concert promoter, especially in San Francisco, during the golden age of rock and roll, having put on concerts with nearly all the greats including the subject of the within case, The Grateful Dead.

        This case involves the use of a number of concert posters and tickets featuring different images of the band in which the owner of the rights to the posters was the plaintiff, Bill Graham Archives.  (I have always believed that artwork can often be much more valuable than the content of books and thus ownership of rights to artwork is essential.   It is from artwork that merchandising rights spring.   Read “The Fundamental Principle Under the United States Copyright Act” and “The Cover Artist/Illustrator Agreement.”   Even though this case deals with concert posters, the issues about ownership of artwork are the same.)  Issues about such ownership were not involved in this case.  Instead what was involved was the use by the defendants of smaller versions of certain of these posters and tickets without a license from the plaintiff.   A license was sought but the parties could not reach agreement on the terms.  The infringement litigation followed and the fair use defense was raised.

        Defendants published a biography of the band (“Grateful Dead: The Illustrated Trip”) and used the reduced size versions of the posters and tickets in the said book.  The book was “intended as a cultural history” of the band.  The book followed a timeline of the band’s story and used the disputed images as part of the said timeline.

        The trial court granted defendants’ motion for summary judgment and ruled that the use was protected by the fair use provisions of the copyright law (read “Fair Use.”)

        The Court here reviewed the 4 factor test.

Purpose and Character of Use

        The Court stated:

We first address “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1).2  Most important to the court’s analysis of the first factor is the “transformative” nature of the work. See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990). The question is “whether the new work merely supersede[s] 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 v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (internal citations and quotation marks omitted) (alteration in original). [Footnote omitted]

Here, the district court determined that Illustrated Trip is a biographical work, and the original images are not, and therefore accorded a strong presumption in favor of DK’s use. In particular, the district court concluded that DK’s use of images placed in chronological order on a timeline is transformatively different from the mere expressive use of images on concert posters or tickets. Because the works are displayed to commemorate historic events, arranged in a creative fashion, and displayed in significantly reduced form, the district court held that the first fair use factor weighs heavily in favor of DK.

While there are no categories of presumptively fair use, see Campbell v. Acuff- Rose Music, Inc., 510 U.S. at 584, courts have frequently afforded fair use protection to the use of copyrighted material in biographies, recognizing such works as forms of historic scholarship, criticism, and comment that require incorporation of original source material for optimum treatment of their subjects. See 17 U.S.C. § 107 (stating that fair use of a copyrighted work “for purposes such as criticism, comment . . . [or] scholarship . . . is not an infringement of copyright”); Am. Geophysical Union v. Texaco, Inc., 60 F.3d 913, 932 (2d Cir. 1994) (Jacobs, J., dissenting) (noting that “[m]uch of our fair use case law has been generated by the use of quotation in biographies, a practice that fits comfortably within the[] statutory categories of uses illustrative of uses that can be fair”) (internal quotation marks omitted) (alteration in original); Salinger v. Random House, Inc., 811 F.2d 90, 96 (2d Cir. 1987) (holding that quotation of Salinger’s letters in a biography could be considered criticism, scholarship, and research, which are among the illustrative statutory categories of fair use enumerated in 17 U.S.C. § 107).

        The Court also found that because the use of the posters in the biography was in a much reduced size and was incorporated with text and other elements and the plaintiff’s posters represented an inconsequential amount relative to the biography, that these factors also indicated a transformative use.  (The reader is strongly cautioned that, as to the factor underlined herein, there is absolutely no fixed word count, percentages or any other established amounts that are allowed under the fair use doctrine.  I recognize that those who seek “rules of thumb” and other similar if totally incorrect anecdotal standards are uncomfortable with “it depends,” but that discomfort does not make such “rules of thumb” or anecdotal standards correct and, as indicated, they are all incorrect and you should never rely on the same and of course, you should never rely on legal advice provided by non-lawyers).  The Court also ruled that merely because the use was of a commercial nature as opposed to non-profit, that did not in itself rule against a finding of fair use.

        The Court held that the use of the posters in the biography was transformative and thus this factor weighed in favor of the defendants.

        The Court cited to the Presley case discussed in the article mentioned above and stated:

See Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 628-29 (9th Cir. 2003) (finding the use of television clips to be transformative where “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 not to be transformative where the clips “play without much interruption, [and t]he 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”);
Nature of the Copyrighted Work

        The Court stated:

The district court determined that the second factor weighs against DK because the images are creative artworks, which are traditionally the core of intended copyright protection. Nevertheless, the court limited the weight it placed on this factor because the posters have been published extensively.

Accordingly, we hold that even though BGA’s images are creative works, which are a core concern of copyright protection, the second factor has limited weight in our analysis because the purpose of DK’s use was to emphasize the images’ historical rather than creative value.

Amount and Substantiality of the Portion Used

        Let me repeat what I wrote above since this factor, as the first factor, are often used as an incorrect “short cut” to a correct legal analysis.  The reader is strongly cautioned that there is absolutely no fixed word count, percentages or any other established amounts that are allowed under the fair use doctrine.  I recognize that those who seek “rules of thumb” and other similar if totally incorrect anecdotal standards are uncomfortable with “it depends,” but that discomfort does not make such “rules of thumb” or anecdotal standards correct and, as indicated, they are all incorrect and you should never rely on the same and of course, you should never rely on legal advice provided by non-lawyers

        This factor applies to an analysis of the amount of the copyrighted work (i.e. the posters in this instance) used.

        The Court stated:

Neither our court nor any of our sister circuits has ever ruled that the copying of an entire work favors fair use. At the same time, however, courts have concluded that such copying does not necessarily weigh against fair use because copying the entirety of a work is sometimes necessary to make a fair use of the image. See Kelly, 336 F.3d at 821 (concluding that images used for a search engine database are necessarily copied in their entirety for the purpose of recognition); Nunez v. Caribbean Int’l News Corp., 235 F.3d 18, 24 (1st Cir. 2000) (concluding that to copy any less than the entire image would have made the picture useless to the story). Adopting this reasoning, we conclude that the third-factor inquiry must take into account that the “the extent of permissible copying varies with the purpose and character of the use.” Campbell, 510 U.S. at 586–87. [Emphasis added]

Here, DK used BGA’s images because the posters and tickets were historical artifacts that could document Grateful Dead concert events and provide a visual context for the accompanying text. To accomplish this use, DK displayed reduced versions of the original images and intermingled these visuals with text and
original graphic art. As a consequence, even though the copyrighted images are copied in their entirety, the visual impact of their artistic expression is significantly limited because of their reduced size. See Kelly, 336 F.3d at 821 (concluding that thumbnails are not a substitute for full-size images). We conclude that such use by DK is tailored to further its transformative purpose because DK’s reduced size reproductions of BGA’s images in their entirety displayed the minimal image size and quality necessary to ensure the reader’s recognition of the images as historical artifacts of Grateful Dead concert events. Accordingly, the third fair use factor does not weigh against fair use.

Effect Of the Use Upon the Market for or Value of the Original

        The Court said:

The court looks to not only the market harm caused by the particular infringement, but also to whether, if the challenged use becomes widespread, it will adversely affect the potential market for the copyrighted work. Harper, 471 U.S. at 568. This analysis requires a balancing of “the benefit the public will
derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied.”
The parties agreed that the use would not have an impact on the primary market for the posters but the issue that had to be addressed was whether it “usurps BGA’s potential to develop a derivative market.”  In this regard, the Court addressed the issue that defendants had initially sought a license but then relied on fair use when terms could not be agreed upon.
Here, unlike in Texaco, we hold that DK’s use of BGA’s images is transformatively different from their original expressivepurpose.6  In a case such as this, a copyright holder cannot prevent others from entering fair use markets merely “by developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work.” Castle Rock, 150 F.3d at 146 n.11. “[C]opyright owners may not preempt  exploitation of transformative markets . . . .” Id. Moreover, a publisher’s willingness to pay license fees for reproduction of images does not establish that the publisher may not, in the alternative, make fair use of those images. Campbell, 510 U.S. at 585 n.18 (stating that “being denied permission to use [or pay license fees for] a work does not weigh against a finding of fair use”). Since DK’s use of BGA’s images falls within a transformative market, BGA does not suffer market harm due to the loss of license fees. [Footnote omitted.  Emphasis added.]

        I would urge the reader to read all the articles on my site dealing with fair use.  In addition, I believe it would be helpful to read “Respect for the Law.”  As I have indicated in those articles and elsewhere, reliance on this doctrine is fraught with legal risk since the application of the doctrine is very uncertain.  It is always better to seek a license.

Copyright © 2006 Ivan Hoffman.  All Rights Reserved.


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 and is not a solicitation.


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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