EXPANDING FAIR USE: THE TROUBLE WITH PARODY, THE CASE FOR SATIRE. The Forty Sixth Annual Donald C. Brace Memorial Lecture* by ROGER L.

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1 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 1 4-MAY-17 12:23 Expanding Fair Use 165 EXPANDING FAIR USE: THE TROUBLE WITH PARODY, THE CASE FOR SATIRE The Forty Sixth Annual Donald C. Brace Memorial Lecture* by ROGER L. ZISSU** Thank you, Nancy. I am deeply honored indeed humbled to have been chosen and to join with the distinguished Brace Lecturers who have preceded me. Thank you all for your time this evening. INTRODUCTION CHOICE OF SUBJECT In selecting a topic, I decided to speak on some substantive, bread and butter aspect of the law of copyright that did not focus on advances in technology or the Internet. What I finally came up with is a revisit to fair use. I say revisit, because in my counting, since the first Brace Lecture in 1970, at least one fourth of our prior lecturers have selected the fair use doctrine or some aspect of its application as their topic. My reasons for returning to fair use are, first, that this defense goes to the intersection of the limited monopoly of copyright with the core of our basic constitutional free speech rights, the foundation underlying free thought, and the consent of the governed to achieve representative, democratic government. Much more than commercial interests are affected by the existence of a constitutionally-based limited copyright monopoly in an author s expression. The other side of the coin is the liberty to read, hear and see what we wish for our entertainment and amusement, as well as for our thoughts and the necessary social comment essential to daily life in our society. Second, my choice of fair use also stems from my experience with the fair use limitation on copyright in both my litigation and counseling practice and in the contribution I made to the festschrift for Professor Benjamin Kaplan in Mathew Bender s 2005 republication of his classic 1967 *Following the introduction by Nancy Wolfe, the Copyright Society President, this lecture was delivered without the footnotes and headings at the Lowenstein Center, Fordham University School of Law in New York City on November 17, The text includes a limited number of minor edits but no revisions of substance. My partner, Craig Mende, gave helpful comments on its drafts. **Roger Zissu is a partner in the New York City law firm of Fross Zelnick Lehrman & Zissu, P.C. He is a past President of the Copyright Society of the U.S.A. ( ), which sponsors the Brace Lecture series, and was Chair of the Committee on Copyright and Literary Property of the New York City Bar ( ).

2 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 2 4-MAY-17 12: Journal, Copyright Society of the U.S.A. Carpentier Lectures, entitled An Unhurried View of Copyright 1 my piece explored a fair use exception for humorous uses. 2 I have in mind addressing tonight a specific kind of unauthorized use that I believe deserves encouragement and merits positive weight in fair use evaluation, but that the courts have been reluctant to consistently embrace, at least, in their enunciation of the governing standard. That is, borrowing for satire. In this evening s presentation, I will assume your familiarity with the nature of the fair use defense, including its historical underpinning and purpose, as well as the four statutory fair use factors listed in 107 of the 1976 Copyright Act. 3 While critical of the imprecision and on occasion particular case results, or of the remedy of injunction for unauthorized derivative works, our earlier lecturers, along with others who have written or spoken on fair use, have all accepted or resigned themselves to the fact that in the absence of any clarifying amendments to the statute itself, there are no bright-line rules, and the decisions in litigated cases and controversies will inform and fill out the meaning of fair use for some time to come. 4 1 BENJAMIN KAPLAN ET AL., AN UNHURRIED VIEW OF COPYRIGHT: REPUB- LISHED (AND WITH CONTRIBUTIONS FROM FRIENDS) (2005). 2 Roger L. Zissu, Funny Is Fair: The Case for According Increased Value to Humor in Copyright Fair Use Analysis, in id. 3 The statute reads: 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. 4 See Pierre N. Leval, Fair Use or Foul?, 36 J. COPYRIGHT SOC Y 167 (the 1989 Donald C. Brace Memorial Lecture); Lloyd L. Weinreb, Fair Use and How It Got That Way, 45 J. COPYRIGHT SOC Y 634 (1998) (the 1998 Donald C. Brace Memorial Lecture); Alex Kozinski & Christopher Newman, What s So Fair About Fair Use?, 46 J. COPYRIGHT SOC Y 513 (1999) (the 1999 Donald C. Brace Memorial Lecture); Richard Dannay, Copyright Injunction and Fair Use: Enter ebay Four

3 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 3 4-MAY-17 12:23 Expanding Fair Use 167 My own view is the same as that expressed by the Congress in 1976: that no generally applicable definition is possible and each case must be decided on its own facts. 5 I. NATURE AND JUDICIAL DEFINITIONS OF SATIRE AND PARODY Since my presentation relates to the copyright law s reception of satire as distinguished from parody, I will begin with why we should care about satire, along with a few words concerning the nature of works of satire and parody, and how they are defined generally, as well as judicially under the copyright law. A. General Nature and Importance In Harriet Dorsen s enlightening 1985 article, she notes that satire is one of the oldest forms of literary expression that has provided us with a potent form of social commentary which attempts to expose the foibles and follies of society in direct, biting, critical, and often harsh language [sometimes] tempered by humor. 6 Harriet s article deplores the inadequate legal protection afforded to the traditions of satiric form, an unfortunate development that she describes as having demoted satire to being a previously unrecognized tort of satiric appropriation. 7 Throughout the nineteenth and early twentieth centuries, satiric journals and literary works were the source of our most influential commentary, regularly targeting the political, religious and social leaders along with their ideas and deeds. 8 More recently, critics and leaders in thought have found their audiences through broadcast, cinematic, and online media. Satiric commentary has existed in many forms, spanning the broad panoply of copyrightable subject matter, from literary and artistic efforts to the performing and visual arts and musical compositions, in some, but not all, instances embodying humor. Over the centuries, the satirists who have benefitted our lives run from Horace through Rabelais and Voltaire, and from Swift and Daumier through, in our time, Woody Allen, the writ- Factor Fatique or Four Factor Freedom?, 55 J. COPYRIGHT SOC Y 449 (2008) (the 2007 Donald C. Brace Memorial Lecture); 4 MELVILLE B. NIMMER & DAVID NIM- MER, NIMMER ON COPYRIGHT [A][1][a] at (2016); William F. Patry & Shira Perlmutter, Fair Use Misconstrued: Profit, Presumptions and Parody, 11 CARDOZO ARTS & ENT. L.J. 667 (1993). 5 H.R. REP. NO , at 65 (1976) [hereinafter HOUSE REP. ]. 6 Harriet K. Dorsen, Satiric Appropriation and the Law of Libel, Trademark, and Copyright: Remedies Without Wrongs, 65 B.U. L. REV. 923, 924 (1985). 7 Id. at Id. at 924 n.26.

4 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 4 4-MAY-17 12: Journal, Copyright Society of the U.S.A. ers of Mad and Spy magazines, Saturday Night Live, The Daily Show, Colbert Report and the New Yorker s Borowitz Report, and so many others. In his 1998 article in the Journal of the Copyright Society of the U.S.A., Professor Tyler Ochoa notes that social criticism is arguably even more valuable to society than [parodic] criticism of particular works of art. 9 He observes that this is more than an academic matter, for history demonstrates that parodists and satirists are often the first victims of a dictatorship. 10 In today s world, we have only to think of countries like Russia, North Korea, Iran, Egypt, Pakistan, Bangladesh, China, Turkey and Syria to see the dangers for journalists and opinion writers. The undisputed bottom line is that satirists have always been important, indeed, essential contributors to our society as authors of informative and highly useful new creative works, whose occasional and reasonable takings for new and fresh insights we should wish to encourage and not stifle. However, because of the diversity of the forms in which satire has appeared, its precise meaning historically has eluded definition. According to Gilbert Highet in The Anatomy of Satire, satire is the general category of expression that includes parody as one of its typical weapons, along with irony, paradox, and exaggeration. 11 B. Differing Legal Definitions In the 2 Live Crew case, Campbell v. Acuff-Rose Music, Inc., where the Supreme Court, for the first time definitively recognized parody s claim to copyright fair use, Justice Souter was careful to distinguish parody from satire. He observed that satire was defined as a work in which prevalent follies or vices are assailed with ridicule or attacked through irony, derision or wit, and that parody often shades into satire when society is lampooned through its creative artifacts in some manner. 12 With regard to parody, he noted that [m]odern dictionaries define a parody as a second work by a different author that imitates the characteristic style of an author of a prior work in such manner as to ridicule or criticize the copied work. 13 With regard to the legal meaning of parody, Justice Souter observed that [f]or the purposes of copyright law, the nub of the definitions, and the heart of any parodist s claim to quote from existing material, is the use of some elements of a prior author s composition 9 Tyler T. Ochoa, Dr. Seuss, the Juice and Fair Use: How the Grinch Silenced a Parody, 45 J. COPYRIGHT SOC Y 546, 611 (1998) (emphasis added). 10 Id. at Dorsen, supra note 6, at 924 (quoting GILBERT HIGHET, THE ANATOMY OF SATIRE 16 (1962)) (emphasis added) U.S. 569, 581 n.15 (1994) (citations omitted). 13 Id. at 580.

5 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 5 4-MAY-17 12:23 Expanding Fair Use 169 to create a new one that, at least in part, comments on that author s works. 14 I will add that in terms of their fair use purposes under 107, satirical and parodic uses fall within the categories of criticism or comment. II. THE PROBLEM, AND THE CASE FOR SATIRE In Campbell, the Supreme Court held that a rap song incorporating elements of the song Oh Pretty Woman could be a fair use to mock the white bread nature of the Roy Orbison song, notwithstanding the commercial character of the unauthorized use. 15 The Court s acceptance of parodic purpose came in its evaluation of the first of the four illustrative factors set out in 107 of the Copyright Act, the purpose and character of the [defendant s] use. 16 In evaluating this factor, the Court was emphatic in conditioning its recognition of parody as potential fair use on the borrowed works by definition commenting on or targeting, at least in part, the copied work. 17 For brevity, I will sometimes refer to this requirement as the commenting rule or requirement, or, as Justice Kennedy s concurrence terms it, the targeting requirement. 18 Yet, I intend to show that this commenting requirement was not prescribed by the Supreme Court as a test for fair use with regard to other kinds of unauthorized borrowing, such as satires. In its acceptance of parody as a fair use purpose, 19 the Court was also careful to express no opinion as to works using elements of an original as vehicles for satire or amusement making no comment on the original or criticism of it. 20 So, what s the problem? Although my title may imply there is a problem with this acceptance of parody as fair use, I have no issue with the result or reasoning of Justice Souter s opinion. However, if the case for satire is not, and has not been, an easy one, [t]he fault, dear Brutus is not in our stars or Justice Souter s opinion, but mostly in ourselves, 21 by which I mean the problem lies in what we sometimes have done with Campbell s distinction between parody and satire in its aftermath. 14 Id. 15 Id. at 594. The Court held that the Sixth Circuit s error was to conclude that 2 Live Crew s parody was presumptively unfair in view of the parodic purpose of the use and remand[ed] for further proceedings consistent with its legal holdings. Id. 16 Id. at Id. at Id. at Id. at ; accord at 598 (Kennedy, J., concurring). 20 Id. at 592 n WILLIAM SHAKESPEARE, JULIUS CAESAR act 1, sc. 2.

6 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 6 4-MAY-17 12: Journal, Copyright Society of the U.S.A. Some courts, and at least one notable commentary, 22 have misconstrued the Supreme Court s forbearance in deciding only the actual parody case before it, while leaving for another day the case for a satire that makes no criticism of the original work. These decisions and commentary have mistakenly read Campbell as excluding the satirical nature of a work from qualifying as a positive in evaluating the purpose and character of a defendant s borrowing. In certain instances, they also have misapplied the commenting rule. On the other hand, as we shall see, there are decisions post-campbell where, on a case-by-case basis, the courts have understood the legal distinction between satire and parody, and correctly viewed a satirical effort favorably under the first factor without applying the targeting rule. To step back for a moment, Justice Souter s opinion in Campbell cannot be blamed for those lower court decisions that have misunderstood that opinion as narrowing the breathing space for non-parodic commentary. As Patry s latest fair use treatise observes, the distinction made in Campbell between satire and parody was not intended to be a rigid dichotomy. 23 With regard to satire, this term: is used to refer to conduct that does not explicitly target the original, but this does not mean that justification cannot be found or that the use will not ultimately be found to be a fair use. In all cases, it is the particular type of use made, not the label attached to the use that matters. 24 As we shall also see, the majority opinion in Campbell itself contemplated satires that can lawfully borrow without taking parodic aim at the original work. 25 Yet, the varying results since Campbell, sometimes upholding and sometimes condemning takings for satire, as well as the negative views of satire expressed in certain quarters, 26 raise the ultimate question I will address. This question is whether copying without permission from another author s work where, unlike parody, there is concededly no need for the second author to copy from the original to make his or her point about the world or society, should ab initio be viewed in a positive light and be held to have a sufficiently beneficial purpose to be treated as favorably as parody in the fair use analysis. To date, no courts, even those excusing satiri- 22 See Bruce P. Keller & Rebecca Tushnet, Even More Than Parody the Real Thing: Parody Lawsuits Revisited, 94 TRADEMARK REP. 979, (2004). 23 WILLIAM F. PATRY, PATRY ON FAIR USE 3:89, at 420 (2015). 24 Id. 25 Campbell, 510 U.S. at 581 n See, e.g., WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW (2003); Keller & Tushnet, supra note 22, at ; PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT, , at (3d ed. 2015).

7 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 7 4-MAY-17 12:23 Expanding Fair Use 171 cal uses, have yet frontally and specifically endorsed satirical purpose as a fair use exception or category for positive treatment under the first factor. But such positive recognition is obviously of particular importance for the legitimacy of efforts at satire and to the continued vitality of this societally valuable genre. In the rest of my lecture I will first discuss the judicial treatment of satire as fair use comment or criticism both before and after Campbell in light of various aspects of Justice Souter s opinion, 27 and then propose a formulation for determining the merits of a defense of fair use that would consider favorably a borrowing for use in a satirical work in evaluating the first statutory fair use factor, the purpose and character of the defendant s work. III. DECISIONS BEFORE AND AFTER CAMPBELL The decision to accord parody a positive status in fair use evaluation is rooted in logic and the case law beginning before Campbell, which had upheld the fair use defense where, due to the nature and content of the copyright holder s work, copying from a prior work is necessary to respond to or dissent from the copied work. 28 Thus, copying in a critical review or rhetorical effort for the purpose of expressing disagreement and where the defendant went beyond merely repackaging and actually added something new or fresh to the debate, has historically weighed favorably under the first fair use factor. 29 Viewed from this perspective, copying for parody as now legally defined in Campbell really falls into the larger category of necessity or rightof-reply fair uses. In Justice Souter s words, parody needs to mimic an 27 I will not address cases in which a defendant s use is overlapping for both parody and satire, for example, where the new work at issue is intended to mock a plaintiff s work and also comment on or lampoon society. The reason for my focusing on takings only for satire is that, as noted by Justice Kennedy s concurring opinion in Campbell, whenever the new work is a satiric effort that borrows without permission to comment on the general style, the genre of art... or society as a whole, if it targets the original work it may target those features as well. Campbell, 510 U.S. at 597. In other words, the fair use determination will then turn on the parody defense, which is not the subject of this lecture. The law is now clear under Campbell that a parodic effort in such instances that satisfies the commenting requirement will be weighed favorably under the first factor whenever the new work qualifies as transformative. 28 See PATRY 3.9, supra note 23, at ; HOUSE REP., supra note 5, at 73 ( When a copyrighted work contains unfair, inaccurate, or derogatory information concerning an individual or institution, the individual or institution may copy and reproduce such parts of the work as are necessary to permit understandable comment on the statements made in the work. ). 29 PATRY, supra note 23, 3.9, at

8 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 8 4-MAY-17 12: Journal, Copyright Society of the U.S.A. original to make its point. 30 In explaining the reason for the targeting requirement, Justice Kennedy s concurrence similarly identified this prerequisite as confining fair use protection to works whose very subject is the original composition and so necessitates some borrowing from it. 31 A. Necessity / Right of Reply Cases A leading pre-campbell example of the right-of-reply category is Maxtone-Graham v. Burtchaell. 32 There, the plaintiff had published a book of interviews with women discussing their experiences with abortion and unwanted pregnancy. The defendant, a Catholic priest and professor of theology at the University of Notre Dame, wrote an essay commenting on these interviews. He considered it essential for the credibility of his work to use the actual words of abortion veterans themselves recounted by the plaintiff author. The Second Circuit held that the purpose and character of the defendant s copying in such circumstances was favored under Lennon v. Premise Media Corp. 34 involved the fair use purpose of criticism or comment and also can be viewed as a post-campbell necessity/ right of reply case with regard to John Lennon s famous song Imagine. Judge Sidney Stein s 2008 decision handed down two years after the Second Circuit s Blanch v. Koons opinion that will be discussed later under the rubric of satire cases raised the question of whether the producer of a movie could borrow a short portion of Lennon s song in a film critical of scientific human evolution theory. By this time, fourteen years had elapsed since Campbell, and the court recognized that the defendant s movie concerning the theory of intelligent design needed to use the copied music in order to disagree with its lyrics, given the film s purpose and the defendant s actual creation of a new perspective in its unauthorized borrowing. The successful right-of-reply defenses upheld the defendant s copying, whether or not the plaintiff or the court agreed with the content of the defendant s views Campbell, 510 U.S. at (emphasis added). 31 Id. at 597 (emphasis added) F.2d 1253 (2d Cir. 1986). 33 See id. at 1257, 1260, 1263; see also Savage v. Council on Am. Islamic Relations, Inc., 07-CV-6076 (SI), 2008 WL (N.D. Cal. July 25, 2008); for a right-of-reply decision ostensibly on parody that actually adjudicated a satirical use, see Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986) F. Supp. 2d 310 (S.D.N.Y. 2008). 35 See, e.g., Maxtone, 803 F.2d at It would not be appropriate for a court to judge the merits of views of those debating social or political issues. See Campbell, 510 U.S. at 582 (quoting Justice Holmes in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) ( [i]t would be a dangerous undertaking for persons

9 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 9 4-MAY-17 12:23 Expanding Fair Use 173 In contrast, the Harper & Row case, which I tried for the plaintiff publishers, provides a good example of a defendant s inability to demonstrate either the necessity for its unauthorized use, or in terminology not judicially accepted until Campbell nine years later anything transformative in its resulting work, the Nation magazine article published before the appearance of the Ford memoirs. 36 The article copied and closely paraphrased a significant amount of material embodying essentially the heart of the book and the allegedly definitive manner in which the author recounted the (concededly) unprotected historical facts pertaining to the resignation and pardon of President Nixon. The magazine s defense was that its fair use purpose was news reporting matters of high public concern. 37 However, its editor also testified in his deposition, introduced at trial, that the magazine s comment on President Ford s memoirs was intended to be invisible. The district court was persuaded that nothing new was added to the copied material and that there was no necessity to copy what had been taken from the book. The Supreme Court agreed. B. Satire Cases Pre-Campbell Notwithstanding the fact that satire does not necessitate copying from a particular plaintiff s work, there were early cases before Campbell in the Second Circuit that in dicta expressed positive views of satirical takings, although mislabeling them as parody. These involved Mad Magazine s publication of new lyrics to Irving Berlin tunes 38 and Saturday Night Live s I Love Sodom to be sung to the melody of I Love New York. 39 But the pro-satire dicta in the Second Circuit lost ground, two years before Campbell, in Rogers v. Koons. 40 Jeff Koons had created the sculpture, String of Puppies, which copied nearly in toto in three dimensions the plaintiff s photograph Puppies, essentially making it into a three dimensional sculpture. 41 The court held that it was difficult to discern any parody of the photograph and also rejected Koon s defense that his sculpture was a satirical critique of our materialistic society. The court ruled that because there was no comment on the plaintiff s photograph, the first factor cut against a finding of fair use. 42 The court also found trained only to the law to constitute themselves outside of the narrowed and most obvious limits )). 36 Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985). 37 See id. at 556 (citation omitted). 38 Berlin v. E.C. Publ ns, Inc., 329 F.2d 541 (2d Cir. 1964). 39 Elsmere Music, Inc. v. Nat l Broad. Co., 623 F.2d 252 (2d Cir. 1980) F.2d 301 (2d Cir. 1992). 41 Id. at 311; see id. at Id. at 310.

10 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 10 4-MAY-17 12: Journal, Copyright Society of the U.S.A. that the photographer s potential market for licensing derivative works in another medium was invaded. In United Feature Syndicate v. Koons, 43 decided in 1993 just before Campbell, Southern District Judge Leisure followed the Second Circuit s Rogers decision and rejected the same artist s satire defense for another of his sculptures entitled Wild Boy and Puppy based on the Garfield comic strip character Odie. Koons argued that his sculpture copying Odie was fair use because it symbolized the cynical and empty nature of society. 44 The court rejected this defense, reasoning that Koons sculpture was not a comment, criticism or parody directed in any way at Odie. 45 A year later, in 1994, came the Supreme Court s landmark Campbell decision, which involved the rap group 2 Live Crew s use of portions of Roy Orbison s song Oh, Pretty Woman. Justice Souter s analysis of the first fair use factor began by citing Justice Story s 1841 observation in Folsom v. Marsh that the central purpose of the fair use inquiry was to determine whether and to what extent the new work is transformative in the sense expounded in Judge Leval s 1990 Harvard Law Review article, Towards a Fair Use Standard. 46 In the words of Justice Souter, the inquiry is whether the new work merely supersedes the objects of the original creation... or instead adds something new, with further purpose or different character so as to be transformative. 47 As the Campbell opinion also explained, when... the second use is transformative, market substitution is at least less certain, and market harm may not be so readily inferred. 48 As Judge Leval discussed in further detail in his article, for a second work to be transformative, two things are necessary: first, the use must be productive creatively by adding something new, and second, it must employ the quoted matter in a different manner or for a different purpose from the original. 49 Judge Leval s article also quoted Justice Story s statement in Folsom that if a reviewer quoted important parts from the original work with a view... to supersede the use of the original work, it was clear that infringement would be found. 50 The issue of whether the new work is transformative, including especially with regard to the further purpose or different character criterion, thus brings into play under the first factor the further question of whether F. Supp. 370 (S.D.N.Y. 1993). 44 Id. at Id. at Campbell, 510 U.S. at 579 (citing Folsom v. Marsh, 9 F. Cas. 342 (C.C. Mass. 1841) (No. 4,901)). 47 Id. (in part quoting Folsom, 9 F. Cas. at 348) U.S. at 591 (emphasis added). 49 Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1111 (1990). 50 Id. at 1112.

11 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 11 4-MAY-17 12:23 Expanding Fair Use 175 the new work will supplant the original, 51 which is also a fourth factor consideration. The critical relationship between the different purpose requirement under the first fair use factor, and market substitution, the fourth factor, is made again in Judge Leval s 2015 Google Books opinion. 52 As he explains in discussing the first factor, the term transformative is... a suggestive symbol for a complex thought : there must be more than changes in form, and the taker s work must be different in purpose and serve a different function from the original. 53 The Google Books opinion in addressing the fourth factor expressly notes that there is a close linkage between the first and fourth factors. 54 The court stresses the fourth factor again in the following passage: With respect to the first factor test, it favors a finding of fair use (unless the value of its transformative purpose is overcome by its providing text in a manner that offers a competing substitute for Plaintiffs books.) 55 Since this will be important later on, at this point I have to add that, unfortunately, some courts and commentators have overlooked or misunderstood the complex, two-pronged nature of the transformativeness inquiry. 56 They have focused only on the changes in the original work to add new value without appreciating or expressing the significance of the relationship of a transformative finding to whether unauthorized derivative works will cause market substitution. The point being misunderstood is that virtually all works that qualify as transformative are derivative works; but not all derivative works are transformative. A new work that copies from another, and adds something new, fails to meet the further different purpose requirement for transformative when it is derivative but supersede[s] the objects of the original creation. 57 In looking at ensuing decisions, we should also keep in mind that, notwithstanding Campbell s commenting requirement, the Supreme Court made the following sliding-scale observation in that case: When there is little or no risk of market substitution,... taking parodic aim at an original is a less critical factor in the analysis, and looser forms 51 Accord, PATRY, supra note 23, 3:9, at Authors Guild v. Google, Inc., 804 F.3d 202, 214 (2d Cir. 2015). 53 Id. at 214, (citation omitted). 54 Id. at (citing Campbell, 510 U.S. at 591). 55 Id. at 218 (emphasis added) (citation omitted). 56 See, e.g., Cariou v. Prince, 784 F. Supp. 2d 337, 348 (S.D.N.Y. 2011), judgment rev d in part, vacated in part, 714 F.3d 694 (2d Cir. 2013); Kienitz v. Sconnie Nation, LLC, 766 F.3d 756, 758 (7th Cir. 2014); Diane Leenheer Zimmerman, The More Things Change, the Less They Seem Transformed : Some Reflections on Fair Use, 46 J. COPYRIGHT SOC Y 251 (1998); NIMMER & NIMMER, supra note 4, [B][6], at (1). 57 Campbell, 510 U.S. at 569.

12 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 12 4-MAY-17 12: Journal, Copyright Society of the U.S.A. of parody may be found to be fair use, as may satire with lesser justification for the borrowing than would otherwise be required. 58 C. Satire Cases Post-Campbell So, then, what about the decisions after 1994 that addressed a satire defense as defined in Campbell? The most disappointing and widely criticized 59 decision in its copyright fair use analysis with regard to a satirical use after Campbell is the Ninth Circuit s affirmance of a preliminary injunction against distribution of Penguin Books poetic rhyming summary of highlights from the O.J. Simpson double murder trial entitled The Cat NOT in the Hat! A Parody by Dr. Juice. 60 Although the district court s injunction was on copyright grounds, the circuit court s affirmance was on both copyright and trademark grounds based on defendants unauthorized use of the Cat s distinctive stove pipe hat on the O.J. character. 61 There was no dispute that a very limited amount of copyrightable expression had been taken. The defendants used the stove pipe hat on the front and the back cover as well as thirteen times in the text, but not the [Dr. Seuss] typeface, poetic meter, whimsical style or visual style. 62 Nor did they copy any words from Dr. Seuss. The court s most obvious mistake was to apply the commenting requirement, even though it found that the work was not a parody, but actually a satire. Indeed, Judge O Scanlain forcefully rejected the defendants claim of parody as post-hoc pure shtick. 63 The other most striking error was to conclude that the Penguin book did not add any new creative expression, a determination belied by the opinion s own description of the defendants work. 64 The court s clear mistake on the newly created content of the defendants work 65 not only distorted the first factor evaluation but also infected its fourth factor analysis where it held that market substitution was more likely. 66 This completely disregarded the intended 58 Id. at 581 n Judge Kozinski, the Copyright Society s 1999 Brace Lecturer, noted the numerous critics of this decision at that early date. Alex Kozinski & Christopher Newman, What s So Fair About Fair Use?, 46 J. COPYRIGHT SOC Y 513, 514 n.4 (1999) (the 1999 Donald C. Brace Memorial Lecture); see also NIMMER & NIM- MER, supra note 4, [A][1][b], at Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1396 (9th Cir. 1997). 61 Id. at 1403, Id. at 1399 (emphasis in original). 63 Id. at 1403, accepting the district court s characterization. 64 See id. at , Accord NIMMER& NIMMER, supra note Id. at 1403.

13 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 13 4-MAY-17 12:23 Expanding Fair Use 177 and actual markets for the two very different kinds of works at issue. 67 What parents would buy the Penguin book about the O.J. Simpson murders as a substitute for the Dr. Seuss classic? The erroneous fair use evaluation of the Penguin book under parody rules appears to have been aided not only by the defendants title labeling it a parody, but also by their briefing. 68 The defendants argued that their work was meant to comment on society s reaction to the O.J. murders and moral dilemma created by Seuss works such as The Cat in the Hat a satire, but their brief on appeal, like their title, referred to their book as a parody. With hindsight, I think the explanation for the Ninth Circuit s flawed copyright fair use analysis was that it took offense at the defendants selection of such an iconic Dr. Seuss work and its stove pipe hat trademark to draw attention, a reaction rooted in trademark principles rather than copyright fair use considerations. Things have gone better since Dr. Seuss at the appellate level in the Second Circuit. In Blanch v. Koons, 69 the artist created a billboard-sized collage painting in which he copied but altered the appearance of part of a copyrighted photograph taken by an accomplished fashion photographer, Andrea Blanch. 70 Koons s painting, titled Niagara, depicts four pairs of women s feet and lower legs dangling prominently over images of confections a large chocolate fudge brownie topped with ice cream, a tray of donuts, and a tray of apple danish pastries with a grassy field and Niagara Falls in the background. 71 According to Koons, he intended to comment on the ways in which some of our most basic appetites for food, play and sex are medicated by popular images. 72 One of the pairs of legs in his painting was adapted from Blanch s published photograph, depicting a woman s lower legs and feet, adorned with bronze nail polish and glittery Gucci sandals resting on a man s lap in what appears to be a first-class airplane cabin. There was no dispute between the parties that Koons s purposes in using her image were sharply different from Blanch s goals in creating her photograph and that Koons s painting was substantially transformative. 73 Following Campbell s formulation, the Court of Appeals concluded that under 107 s first factor the artist s adaptation met the transformative test of whether it merely supersedes the objects of the original creation, or instead added something new and for a further, 67 See id. at , Id. at 1399, F.3d 244 (2d Cir. 2006). 70 Id. at Id. at Id. 73 Id. at 252, 254.

14 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 14 4-MAY-17 12: Journal, Copyright Society of the U.S.A. different purpose. 74 Judge Sack also correctly categorized Koons s painting as satire, not parody, observing that, [i]ts message appears to target the genre of which [Blanch s] Silk Sandals is typical, rather than the photograph itself. 75 However, notwithstanding its conclusion that Koon s new work was transformative, the Second Circuit proceeded to ask a further question: We have applied Campbell in too many non-parody cases to require citation for the proposition that the broad principles of Campbell are not limited to cases involving parody. But the satire/parody distinction may nevertheless be relevant to the application of these principles.... The question is whether Koons had a genuine creative rationale for borrowing Blanch s image, rather than using it merely to get attention or to avoid the drudgery in working up something fresh. 76 The unanimous panel then accepted Koons s answer that the use of an existing image advanced his artistic purposes, 77 establishing a justification for his borrowing, whether or not Koons could have created [his painting] without reference to Blanch s photograph. 78 However, with no dispute that Koons s painting was substantially transformative, 79 did the court need to pose such a further question, under the first factor, and ask about the artist s genuine creative rationale? In Cariou, the Second Circuit held that the transformative nature of defendant Prince s artworks could be determined from his artworks themselves without considering his testimony about his intentions. 80 Blanch s inquiry into Koons s artistic purposes went further, and made relevant the artist s arguably self-serving testimony, raising a credibility determination, 74 Id. at 253 (internal quotation marks and citation omitted). 75 Id. at Id. at 255 (emphasis added). 77 Id. 78 Id. 79 Id. at 252, 254; accord at 262 (Katzmann, J., concurring) F.3d at 707; under 107 s first factor, the court is to consider the purpose and character of the use, 17 U.S.C. 107 (emphasis added). According to Campbell, purpose and character analysis may be guided by the examples given in the preamble [of 107], id. at , which asks whether [the use] is of a commercial nature or is for nonprofit educational purposes, but does not provide for an inquiry into a defendant s personal or subjective intention. Accordingly, Patry considers the transformative use inquiry as focusing on the use, not the user and the general nature or purpose of the discussed work as a whole. PATRY, supra note 23, 3:1, at 98; see also Lish v. Harper s Magazine, 807 F. Supp. 1090, 1101 (S.D.N.Y. 1992) ( The question under factor one is the purpose and character of the use and not of the infringer. ); Twin Peaks Publ ns v. Publ ns Int l, 996 F.2d 1366, 1374 (2d Cir. 1993), emphasizing whether the challenged work serves one of the non-exclusive purposes identified in 107 s preamble to an insignificant or substantial extent, not simply whether it serves one of these approved purposes.

15 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 15 4-MAY-17 12:23 Expanding Fair Use 179 and relied on the court s own ability to evaluate the second author s asserted artistic or literary purposes. I think that the result in Blanch was correct, but the court need not have gone further in its first factor evaluation than its transformative finding. As Judge Sack also noted, the artist s conception of his reason for using Blanch s photo was not a sine qua non for a finding of fair use. 81 Moreover, if the acceptance of the defendant s satirical purpose in Blanch is to serve in future cases, it should have only been grounded in alreadyestablished, objective fair use considerations based on the works at issue and their likely market impact, instead of in a second author s personal statement of his creative rationale. Specifically, as Campbell counseled, we should look to 107 s mandated interrelationship of all the relevant statutory and judicially-accepted fair use factors, including principally here, focusing on and weighing together the degree of creative addition in the artist s use along with the absence or presence of any deleterious effect on the market for Blanch s fashion photography. 82 To deal with the concern about over-indulgence by defendants if satire is deemed to be a positive purpose under the first fair use factor, courts can rely not only on the supersede-the-objects prohibition embodied in a transformative finding, but also on the fourth factor to ensure that satirical takings held to be fair uses will not result in works that invade the copyright holder s derivative work right and undermine copyright protection. There are several cases that have been decided after Blanch that, like Cariou, do not look to the second author s personal statement of the artistic need for copying from a particular plaintiff s work. Instead, these decisions inquire into the two facets of transformation to evaluate the purpose and character of a satirist s copying or reach a fair use result based upon the fourth factor. This is the correct approach, in my view. Lennon v. Premise Media, mentioned earlier in the general category of right-of-reply or necessity fair use, relied on Blanch s holding that the use of Lennon s song, though not necessary, was transformative and therefore qualified as a positive purpose under the first factor. Judge Stein emphasized the different purpose of the defendant s use and lack of proof that a fifteen-second taking would usurp the market for licensing the song. In Henley v. DeVore, the court granted summary judgment to the plaintiff composer on his claim that a politician infringed two of his copyrighted songs in political campaign ads using copies of the songs to attack the views of defendant DeVore s rival for office. 83 The court acknowledged Blanch s holding that satirical works may constitute fair use (al- 81 Blanch, 467 F.3d at Campbell v. Acuff-Rose, Inc., 510 U.S. 569, 578, 581 (1994) F. Supp. 2d 1144 (C.D. Cal. 2010).

16 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 16 4-MAY-17 12: Journal, Copyright Society of the U.S.A. though, citing Campbell, it also observed that satire faces a higher bar because it requires greater justification for appropriating the original work. ) 84 The correct decision to grant the plaintiff summary judgment was based principally on the court s fourth factor conclusion that potential paying advertisers would be deterred from using the plaintiff s two songs because they would be considered old due to their earlier use, which the court rightly considered to be the very essence of market substitution. 85 As an aside, while correct in result, unfortunately the Henley decision also includes the mistaken view that criticism of the plaintiff composer, and not his songs, could qualify as parody and requires application of the commenting rule. 86 In Kienitz v. Sconnie Nation, LLC, 87 the Seventh Circuit, upon the basis of its fourth factor conclusion, affirmed a fair use holding allowing a greatly modified version of the plaintiff s photograph to be used for a very limited profit on a t-shirt, to mock the seven-term Mayor of Madison, Wisconsin. The court characterized the defendant s work as a lampoon that only sought to hold up to ridicule a third person and not to comment on either the copied work or the plaintiff photographer s skills or artistry. 88 But, misunderstanding the term transformative to mean no more than that the second work is derivative, Judge Easterbrook shunned the transformative inquiry and, in his words, decided to stick with the statutory list [of factors], of which the most important is usually the fourth (market effect). 89 Galvin v. Illinois Republican Party 90 is a satire case where another altered copy of a photograph for a political ad was exonerated by a district court as fair use, principally due to the court s favorable evaluation under the fourth factor. A strange use it was. The Illinois Republican Party had intended to use a distorted photo of a Democratic opponent for the state legislature seated in an open convertible to ridicule the candidate, not the quality of the photo of him. But then the defendant altered the picture of the wrong person in the Republican posters, the Democratic opponent s car driver, adding the image of piles of money around him. The court s methodology was, correctly, to consider whether a new work is transformative or will serve as a substitute for and supersede the original under the first factor as best understood in terms of the fourth factor Id. at Id. at 1157, Id. at F.3d 756 (7th Cir. 2014). 88 Id. at Id. at F. Supp. 3d 1187 (N.D. Ill. 2015). 91 Id. at 1194 (citation omitted).

17 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 17 4-MAY-17 12:23 Expanding Fair Use 181 In Morris v. Guetta, the Central District of California followed Blanch in recognizing that the unauthorized use by an appropriation artist of a photograph of bassist Sid Vicious could provide a justification for the defendant s series of paintings alleged to comment on the musician s persona and on the nature of celebrity generally. 92 Yet, the court granted the plaintiff summary judgment because the record constituted an independent basis for determining the purpose and character of Guetta s use, and it showed that the close copying in his paintings of Sid Vicious distinct facial expression captured in the plaintiff s photograph was not sufficiently transformative. 93 According to the Morris court, the transformative nature of a defendant s work is something that a court, whether it be a judge or jury, can observe and decide for itself based on its viewing of the parties works. 94 In the Abbott & Costello Routine case, TCA Television Corp. v. Mc- Collum, recently on October 11, 2016, the Second Circuit reversed the district court s transformative finding. The court cited Blanch, but found that the defendant s Hand to God play did not alter the original Who s on First, What s on Second routine, and only included excessively extensive verbatim copying of it for entertainment, the same purpose for which the Routine was created. 95 It also found an adverse effect on the licensing market for the routine. 96 * * * To sum up, as the law has evolved, the extent to which a defendant s use is transformative is now the most important consideration in first factor evaluation, as well as across the board with respect to all fair use evaluations, not just takings for parody or satire. Though Campbell has placed on any work claimed to be a parody the further definitional requirement that the copying be at least in part to comment on the original, the Supreme Court did not place that burden on satire. The Second Circuit s decisions in Blanch and, more recently, Cariou have recognized this. In Blanch v. Koons, the Second Circuit declined to impose the targeting requirement it had applied in Rogers v. Koons on works that are not pa CV-0684 (JAK)(RZx), 2013 WL , at *9 (C.D. Cal. Feb. 4, 2013). 93 Id. at * Although not the subject of this lecture, the majority view seems to be that the various determinations affecting whether a work qualifies as a fair use, including transformation, are questions of law to be decided by the court, not a jury. See GOLDSTEIN, supra note 26, , at 12:76 (citing cases); contra PATRY, supra note 23, 3:90 (suggesting that transformativeness and whether a use is parodic are questions of fact). 95 No , 2016 WL , at *6 (2d Cir. Oct. 11, 2016). 96 Id. at *13.

18 \\jciprod01\productn\c\cpy\64-2\cpy203.txt unknown Seq: 18 4-MAY-17 12: Journal, Copyright Society of the U.S.A. rodic. As Judge Parker held in Cariou, there is no requirement that a work comment on the original [from which it borrows] or its authors to be transformative and a secondary work may constitute a fair use even if it served some purpose other than those [fair use purposes]... identified in the preamble to In my view, there are several reasons the commenting rule should not apply to satire: First, the negative treatment of satire under the first factor is wrong, because it departs from Campbell, which did not prescribe the parody targeting rule for any other kinds of works. Although some critics of Justice Souter s opinion question the parody/satire distinction as not responsive to fair use considerations and the First Amendment, 98 the decision was unanimous, and is not likely to be altered in the foreseeable future by changes in the composition of the Supreme Court. The issue is not a politically partisan one. Second, the application of the commenting rule has led a number of courts astray in disregarding the overlap and well-established crucial interplay among the four statutory, and all other relevant, factors in reaching fair use decisions. In the cases and in my experience if you dig into applying any one of the four factors, you will find yourself in the middle of one or more of the others. 99 The reason Congress has decided to require evaluation together and not in isolation of a series of factors is that they are not separate and unrelated. 100 The factors evaluation is not an exercise of linear progression to occur separately in the order set forth in 107, but an overlapping and kaleidoscopic process, like an exploration of the atom and its particles or a Venn diagram. The point that the [fair use] factors must be viewed collectively has been made again by the Second Circuit s decision last year in TCA Television Corp. v. McCollum, the Abbott and Costello Who s on First Routine case. 101 In addition, any copying defended as fair use has to work its way through all the relevant factors. 102 This is how the Supreme Court in Campbell has interpreted the statute. The fact that evaluation of any one factor brings inevitably into play the other factors 103 is well exemplified in Campbell itself. There, the discussion of the copier s purpose and character also delves into the third factor of the substantiality of the borrowing, 104 as well as into the fourth F.3d at See Keller & Tushnet, supra note Campbell v. Acuff-Rose, Inc., 510 U.S. 569, 581 (1994). 100 Id. at WL , at * Campbell, 510 U.S. at Accord NIMMER & NIMMER, supra note [C][2], at Campbell, 510 U.S. at 581, 583 n.16.