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Sticky Fingers
Raiding the Copyright Cookie Jar
Part II

© 2016 Mark Barinholtz


              What started out as a “rare exception” safety valve for limited use of the works of others, is threatening to overwhelm the rule itself. The “fair use doctrine” was originally conceived to allow sensible, tailored uses of the creative works of others, for certain laudable purposes. But it has become the knee-jerk, all-purpose excuse du jour for many unauthorized users. The copyright laws themselves, which were meant by the Framers to foster the public benefit, are being eroded by an overreliance and misinterpretation of the doctrine of fair use. This Article examines the history of that doctrine, and some recent developments in caselaw that deserve a closer look.

The Doctrine of Fair Use Over Time:

              Before the Framers met in Philadelphia in 1787 to sign off on the U.S. Constitution, the hottest intellectual properties on our side of the Atlantic, consisted of maps and charts, plus a new method for producing potash.  The Constitution, Article I, Section 8, referenced specific federal protection for “Authors and Inventors” in their “Writings and Discoveries,” as among the legislative powers reserved to Congress.  The stated goal was to promote the progress of science and the useful arts. Copyright and patent laws soon followed.

              Over the years, various statutory enactments which embodied the U.S. copyright law provided for items which could not have easily been foreseen in 1790, the year the first U.S. Copyright Act was passed. ( See, ) For example, the right to print and vend music was first protected by copyright in 1831. Photography first became protectable in 1865, and “works of art” as well as certain kinds of derivative works in 1870. The public performance right in music was first protected in 1897; motion pictures in 1912.  As the copyright statutes developed over time, along with court-rendered interpretations of those laws, including decisions of the United States Supreme Court, the common law doctrine of fair use began to emerge. And in the Internet era, reliance upon that doctrine has accelerated.

              Although various iterations of copyright laws were enacted by Congress from 1790 to 1909, none of those acts codified the equitable doctrine of fair use. Then, in 1978 the current Copyright Act took effect. It was amended to include a new, specific statutory section which codified the various strains of common law as developed by the courts into a new statute – Title 17 of the U.S. Code, Section 107. ( See, ) The law provided a textual guide, albeit somewhat flexible, which the courts must follow in analyzing whether a particular use qualifies as a fair use. In the preamble to this fair use provision, Congress gives lip-service – but not dispositive impact – to the First Amendment concepts related to criticism, commentary and news reporting, as well as the educational pursuits of teaching, scholarship and research. The statute also references such considerations as whether the alleged fair use is a non-profit one, and whether educational purposes are furthered. The statute then sets forth four factors which “shall” be considered by courts. However, those factors are specifically suggested to be non-exclusive, and caselaw otherwise provides that factors such as the case-pertinent behavior of an alleged infringer can be dispositive of the analysis, i.e., “bad actors” whose misfeasance relates to the wrongs alleged should not be enjoying the benefit of the fair use defense.

Fair Use Analysis Invades the DMCA:

              This past year, the Ninth Circuit Court of Appeals in the case of Lenz v. Universal Music, analyzed whether a take-down notice under the Digital Millennium Copyright Act (DMCA) was made in good faith where a presumptively plausible fair use defense could have been considered. The underlying case involved use of a recording of the artist once again known as Prince. The song Let’s Go Crazy provided an amusing soundtrack for an obviously homemade YouTube video showing an infant dancing in the family’s home kitchen. ( See, ) A court battle erupted over competing take-down and put-back notices between Ms. Lenz (the dancing child’s mother) and Prince’s publisher Universal Music.  Apparently, Universal has a search-driven copyright enforcement regime which starts with title searches, e.g., on YouTube, followed by scrutiny of search results by business affairs personnel. Lenz, who most likely posted the video (with unauthorized soundtrack) just for fun, was flummoxed when she received word of a DMCA take-down notice. The Electronic Frontier Foundation took up her cause.

              The federal district court denied the parties’ cross-motions for summary judgment on the issue of how the DMCA’s safe-harbor provisions were to be applied to the controversy. The interpretation of the so-called “good faith” requirement in relation to a potential claim of fair use, became a major issue on appeal.  In considering the matter on appeal, the Ninth Circuit ruled that when preparing and sending out a DMCA take-down notice, the notice proponent (here Universal Music) must at least consider the fair use doctrine, even if only subjectively, in order to satisfy the DMCA’s “good faith” requirement.

              But what does that mean?  Not surprisingly, the decision has been hailed by the Electronic Frontier Foundation -- a self-appointed “copyright abuse” enforcement watchdog -- as a “victory” for the doctrine of fair use. But was it really? And what about the composer’s rights?  Are Prince and his publisher the bad guys, or should the take-down notice simply have been honored because there was no permission granted, or even sought, to use the song as a soundtrack? Are the composer’s rights so meaningless that they can be trampled on without redress? Must we all now become fair use experts, documenting our analysis of the four non-exclusive statutory factors, before issuing a take-down notice?

              Clearly, it is the court’s job, hopefully with the aid of a jury, to say what is or is not fair use. How is anyone other than a court to know how to guide the application, balancing and weighing of the four nonexclusive fair use factors? These questions are not easily answered.  But consider the possibility that the benefits and protections to authors which Congress intended when enacting the DMCA, are being upended by requiring at least some consideration of fair use analysis before issuing a take-down notice. Perhaps the doctrine of fair use itself should be subject to a “good faith” standard of consideration, before being blithely internalized as a rationalization for using someone else’s work or routinely asserted as an excuse for a put-back response to a take-down notice.

             The appeals court decision in Lenz affirmed the district court’s rulings, denying the parties’ cross-motions for summary judgment in the trial court. The affirmance paves the way for the case to proceed to trial, including on the issue of whether Universal sufficiently considered a possible fair use defense prior to issuing the take-down notice to Lenz. As of the end of 2015, the parties’ cross petitions for further appellate reconsideration remained pending. Such efforts are often denied, but you never know. Stay tuned for a final resolution of this case, first filed in 2007!

Transformative Use: Solid analytic framework or Achilles Heel?

              One of the four statutory fair use factors which courts must follow in their analysis of any given fair use defense scenario, is the purpose and character of the use. In conducting such analysis, a significant number of courts have relied upon a formulation characterized as “transformative use.” What courts generally mean by the concept is that a use may tend to qualify as a fair use if the purpose to which the work was originally put is purportedly recast in a different character in the accused use. An example might be a stand-alone work of fine art which is dramatically reduced in size and reproduced in its entirety in a book. In a 2006 case involving the Bill Graham Archive, a book publisher reproduced seven artistic images originally depicted on Grateful Dead event posters and tickets, in a book about the history of the band.  Although permission to reproduce the images was sought by the book publisher in advance of its use of the images, the publisher proceeded to publish even though no license fee could be agreed upon. In my view, this case appears to be incorrectly decided. Putting aside the issue of whether the publisher’s initial request for a license could be construed as an admission that it needed one, the court’s rationale appeared to be based largely on the supposed transformative nature of reducing the size of the posters, and the fact that the reproductions were then used in a book. This is a classic type of usage for which publishers routinely pay licensing fees for artwork and photography rights owned by others. The fact that the court may nearly always find distinguishing elements between the original use and the so-called transformative use, is a self-fulfilling prophecy – an exercise in logic that will always give the court a plausible rationale for spinning the result toward tossing the case.

              In the Seventh Circuit, where my practice is centered, a recent case involving a photograph of a small town mayor and a T-shirt enterprise which morphed the photograph and reproduced it on T-shirts, resulted in a 2014 court decision upholding a defense of fair use against the photographer. In a similar case in the Ninth Circuit, the band Green Day was accused of unauthorized use of an artist’s illustration of a screaming face, by commissioning a four-minute video which was to be projected onto a backdrop which illuminated the stage behind the band as it played one of its songs in concert. The artist’s work, entitled Scream Icon, was prominently featured in the visual content of the entire video. In Seltzer v. Green Day, decided by the Ninth Circuit Court of Appeals in 2013, in similar fashion to the above-mentioned Bill Graham Archive case, the court ruled against the artist Derek Seltzer. In Green Day, the court upheld a fair use defense against the creative author, based in significant part on the notion that the use by the alleged infringer was “transformative” and, at least with respect to the purpose of the use factor, tilted the analysis in favor of fair use. These cases also seem to be incorrectly decided, based on misguided views regrettably unsupported by best practices in logic.

              But in Kienitz v. Sconnie Nation, a 2014 case in the Seventh Circuit, the court for the first time began to question whether the concept of transformative use is being properly applied, or is even viable as an analytic protocol. There, Judge Easterbrook asked if the focus in a truly transformative work should be protection in the creative author as a derivative work, instead of discounting it as “transformative” under fair use analysis. Since the Copyright Act in Section 101 defines a “derivative work” as one which has been recast, transformed or adapted from a preexisting work, that seems to be insightful analysis.

              Judge Easterbrook’s line of thinking is more consistent with the purposes of the Copyright Act in protecting to authors the benefits of their creations, including the exclusive right to create derivative works. See, Title 17, Section 106(2). It would seem arrogant of the purported “fair” user to assume he, she or it has a right to make a “transformed” use of the creative work of others, and to exploit such transformed work in a “derivative” market. I believe courts should take heed of Seventh Circuit Judge Easterbrook’s innovative thinking, in recognizing the derivative nature of the allegedly transformed work, and how the copyright law preserves that right exclusively to the copyright holder.

              For years now, Judge Posner also of the Seventh Circuit, has likewise avoided the widespread rubric of transformative use, particularly as promoted by the Second Circuit, in favor of a term he dubs “substitutional” use. Although this concept is closer to some of the earlier pre-1978 caselaw analyses, the “substitutional” effect of uses going beyond limited, non-competitive bounds, even considering Judge Posner’s view, has not sufficiently influenced doctrinal analysis so as to eliminate the problem of unintended consequences.  A thorough and colorful explanation of Judge Posner’s analysis on this issue, referencing nails and hammers and complementary use, can be found in Ty, Inc. v. Publ. Intl., Ltd., 292 F.3d 512, at 517-19 (7th Cir. 2002).) In an October 2015 decision in The Authors Guild v. Google, Inc., the Second Circuit found Google’s digital copying and indexing of books to be a non-infringing fair use. In doing so, Judge Leval of the Second Circuit revealed a potential split in the Circuits, criticizing Judge Posner’s formulations as “not ... particularly helpful in explaining fair use.”

              In this author’s view, none of the currently commonly prevailing analyses address the “purpose and character of the use” factor in the proper manner. If the original use is one which has been wrongfully exploited, say, on the Internet, then the use which is harmful is use on the Internet – or any other market which the original author might have a right to choose to exploit. That goes to the character of the use which impacts adversely the copyright holder’s rights, whether viewed as derivative work rights or merely exclusive rights statutorily vested in the copyright owner. In other words, merely using the original in a different medium, or even for a different purpose, should not be routinely viewed as supportive of fair use, i.e., as an excuse for free copying.

              It’s at least an exercise in faulty logic, for courts to say that simply because the purported fair use is transformative, i.e., used for a superficially different purpose than the original use, and/or in a different market than originally exploited, or even one not previously exploited by the copyright owner, that the fair use dial should point decidedly in favor of the alleged fair user. That kind of analysis puts too heavy a finger on the wrong side of the scale, and results in a self-fulfilling prophecy. A court-determination of fair use is practically pre-ordained.

              The rule should be that if the alleged fair use is a use that can be licensed, then it is a use that should be licensed. Not, “Oh well, if the artwork was originally used as a poster sold in a gallery or via the Internet, but now it’s reproduced on T-shirts sold by street vendors – that’s a transformative use in an unexploited market, and hence a fair use.” Court’s today are too often getting it wrong.


              Whether we like it or not, there’s a war being waged against the rights of creators, particularly when it comes to use of their works on the Internet. Battle lines are being drawn. On one side are those who would like to use the works of others without compensation, or even permission – those for whom the works of creative authors are nothing more than low-hanging fruit ripe for the plucking, often fresh from the Internet. On the other side are the creative authors seeking to protect their property – intellectual property. Unless creators are vigilant in protecting their hard won rights, there are forces out there working to tip the scale away from them.