Marching Bravely Into the Quagmire: The Complete Mess that the “Transformative” Test Has Made of Fair Use

Stephen Carlisle August 6, 2014

To the Supreme Court of the United States, may God bless your nine little pointed heads, but what have you done to us? The last time you took up fair use, you handed us a few lines of text that has turned the already murky waters of fair use into a complete quagmire that no one can escape. In the oft–quoted case of Campbell v. Acuff-Rose Music, Inc., after reminding us that when analyzing the defense of “fair use” “[t]he task is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis,” ¹ you handed us this doozy:

[Does the new work add] something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative” (citation omitted)? Although such transformative use is not absolutely necessary for a finding of fair use (citation omitted), the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright (citation omitted), and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use. ²

How I wish you all (collectively) had never said that. You could have performed a very simple analysis. The “rap” version performed by the then notorious 2 Live Crew of the classic Roy Orbison song “Oh Pretty Woman” was clearly a parody, and thus protected both under First Amendment grounds and the provision of the fair use section of the copyright act that permits usage for purposes such as criticism and commentary. ³ Unlike the supposed parodies created by “Weird Al” Yankovic, the 2 Live Crew’s rap version commented directly on the source material. This is key. In addition, while obviously the fine sensibilities of the Acuff-Rose music publishing company were offended, one would have a tough case arguing that a parody of the song in any way acted as a substitute for the original or hurt its future economic viability, making the fourth and most important factor of fair use weigh heavily in favor of the 2 Live Crew.

The problem with this line of reasoning is that it ignores the provisions of the copyright act with regards to the creation of “derivative works.” ⁴ According to the copyright act, a derivative work “is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” The problem the Supreme Court created is that the creation of a derivative work is supposed to be an exclusive right of the copyright owner, and requires permission or a license. Indeed the word “transformed” is right there in the definition of what a derivative work is. Yet now, with this language from the Supreme Court, a work that is “transformed” is fair use and is therefore not an infringement of copyright. ⁵

Let’s take as an example a translation. No two languages translate directly into each other. So the translator must make some artistic choices. Amongst these would be how to capture the flavor of the author’s writing style in the new language and how certain uses of slang or idioms might best be conveyed into an aphorism understandable by the new culture that would be reading it. These are original artistic choices that would receive a new copyright in the translation. Yet the making of this translation is supposed to be conditioned on the permission of the original copyright owner. Yet under the reason of the Supreme Court, one could make the argument that the translation was so “transformative” that no permission was required.

Two competing cases, both based upon famous literary works, illustrate the depth of the quagmire which has been created. First up is the 1997 case of Dr. Seuss Enterprises v. Penguin Books USA, Inc. ⁶ At issue was the book The Cat Not in the Hat, a retelling of the events of the then current murder trial of O.J. Simpson, written in the style of children’s author Dr. Seuss. No actual text from any of Dr. Seuss’ works were used, only that the words were written in a similar style. For example instead of “One Fish, Two Fish, Red Fish, Blue Fish” the offending work served up “One Knife? Two Knife? Red Knife Dead Wife.” The design of the book’s cover was imitated, yet the only element that was copied directly was the scrunched up stove-pipe hat worn by the Cat. The cover of the book plainly stated it was “a parody” attributed to a “Dr. Juice,” yet another play on words that had the dual effect of sounding like “Seuss” but also playing upon Simpson’s nickname as a pro football player, “The Juice.” The trial court, affirmed on appeal, held that none of this was a “transformative use.” Further, despite the fact that the Defendant’s book was clearly labelled in large type “a parody” (thus one would not mistake one book for the other) and the rather obvious fact that the two works could never conceivably compete with each other in the marketplace (you would never give your six year old The Cat Not in the Hat), the 9^th Circuit summarily dismissed this point by stating that the Defendants had failed to provide the necessary evidence on this point, and blithely stated that the District Court finding was not “clearly erroneous.” ⁷ I also suppose neither Court ever considered the fact that whatever copying was done was pretty much de minimus. My best guess? Both the trial Court and the Appellate Court found the book to be in poor taste and ruled accordingly.

Contrast that case with that of SunTrust Bank v. Houghton Mifflin. ⁸ This case involved a book by Alice Randall, titled The Wind Done Gone, which retold the story of Gone With The Wind from the point of view of a former slave named “Cynara.” The Wind Done Gone appropriates large portions of the characters and plot of Gone with the Wind, including some scenes and elements that are retold with virtually no alteration or comment that were “not essential to the parodic purpose of the work [and] recur throughout [The Wind Done Gone].” ⁹ You would think that this clearly would be infringement. Yet the Court dithers…would there really be any market harm? The Eleventh Circuit blames the Plaintiff for not adducing enough evidence as to market harm, ¹⁰ the exact opposite of the Ninth Circuit’s ruling (correctly) that fair use is an affirmative defense. The Court goes on to hold that “the transformative nature of Randall’s book…is not a close call…” ¹¹ and reverses the District Court.

The Cat Not in the Hat borrowed very little from the actual writings of Dr. Seuss, but played mostly upon one’s recollections of his writing style. On the other hand, The Wind Done Gone made “substantial use of” Gone with the Wind, including “[appropriating] numerous characters, settings and plot twists.” ¹² Yet the first is held to be not “transformative” and infringing, while the latter is held to be highly “transformative” and fair use.

One could attempt to reconcile the cases on the following basis: The Cat Not in the Hat, while labeled “a parody,” did not really comment on the works of Dr. Seuss. It merely used them as a familiar vehicle for poking fun at the O.J. Simpson trial. The Wind Done Gone obviously has Gone with the Wind clearly in its sights and takes great effort to put a new twist on characters and scenes which are familiar to all, if not iconic. So, can we state that the difference is that The Cat Not in the Hat made no criticism or commentary on the works it borrowed from and that The Wind Done Gone clearly did? If only it was that easy.

Decided the year after The Cat Not in the Hat was the case of Leibovitz v. Paramount Pictures. ¹³ At issue was the copying of famed photographer Annie Leibovitz’s portrait of a nude and very pregnant Demi Moore, which ran on the cover of Vanity Fair magazine. Paramount, in order to create advanced publicity for their upcoming movie Naked Gun 33 1/3: The Final Insult, restaged the photograph so that it was imperceptible from the original and then digitally replaced the face of the model with the smirking visage of lead actor Leslie Neilsen, along with the caption “Due this March.” Is the ad really commenting on Leibovitz’s famous photograph? It seems hard to say that it does. Placing the head of Leslie Neilsen on a photograph of any pregnant woman would convey the same joke, without imitating Leibovitz’s photograph at all. It seems very clear that the intention was to trade on the fame and notoriety of the original photograph (which led to that issue of Vanity Fair being one of its top selling issues of all time ¹⁴). Nevertheless, the Second Circuit twists itself into a pretzel over the space of three paragraphs trying to define precisely what that “comment” actually was, at one point surmising that the “ad may reasonably be perceived as commenting on the seriousness or even the pretentiousness of the original.” ¹⁵ Despite the fact that it could never precisely define what the “comment” was, the Second Circuit pronounced the use to be “transformative” and fair use. ¹⁶

Now, the quagmire deepens. In Perfect 10 v. Amazon, ¹⁷ the copyright owner in adult images found its business being usurped by Google’s practice of providing exact, though reduced sized, images of Plaintiffs’ pictures. When these “thumbnails” were clicked upon, Google led the user to a third party website which displayed the full sized image. These sites were usually displaying the images without permission of the copyright owner, whose website required a subscription and password to enter the site. ¹⁸ Even though the thumbnails represented an exact, though smaller, copy of the Plaintiffs’ photographs, the Ninth Circuit found the use to be “highly transformative” and fair use. ¹⁹ Contrast this holding with that of the Northern District of Illinois, that publishing a book on the popular “Beanie Baby” line of toys and including photographs created independently by the publisher nevertheless infringed the copyright in the plush toys and the photographs were not “transformative.” ²⁰ Further, in the spirit of The Cat Not in the Hat, we find The Elf off the Shelf. ²¹ Yet once again, the Court calls the photographs of the elf doll “parody” and the use “transformative.” ²² What the parody is saying is another matter. While not having read the book, the images viewable online and the references made in the trial Court’s opinion suggest that there is no real parody, in that there is no criticism or commentary, simply the age old tactic of making a children’s plaything do inappropriate things in order to get a laugh.

Wait. It gets worse. For now we delve into the surreal world of “appropriation art,” where the very first step is to copy someone else’s work of art. ²³

First up is the case of Blanch v. Koons. ²⁴ Mr. Koons frequently takes other people’s artwork, not to comment on them, but to comment on other topics. He is no stranger to litigation either, having lost several copyright infringement suits. ²⁵ Here, he appropriated a photograph created by the Plaintiff for a feature in Allure magazine, which consisted of a close up of a woman’s legs and shoes, resting on the lap of a man in an airplane. Koons cropped it, removed some elements, then placed it in a painting along with other elements (also presumably “appropriated” from other artists). In doing so, he claimed he wished to “comment on the ways in which some of our most basic appetites-for food, play, sex-are mediated by popular images.” ²⁶ So why use that image? Why not create your own photograph which illustrates the style you are looking for? It is not as though the image was famous enough that a viewer would recognize the source, and therefore have some element of “criticism and commentary.” Further, what Koons did was create a derivative work of the original photograph. What happened to the rights of an author to control derivative uses? The Court never addresses any of these issues; it merely finds Koons’ use to be “transformative” and thus fair use. ²⁷

So now, instead of having Courts decide questions of law, we are turning the Courts into art critics to make judgment calls on whether a work has “enough” transformation to qualify as fair use. In Morris v. Young, ²⁸ an artist appropriated a photograph of the punk rock band the Sex Pistols and made three reproductions of the photograph. The three reproductions varied from 1) cropping and tinting the photograph red to 2) printing the photograph using black enamel on an acrylic background to 3) reprinting the photograph twice and combining it with the Union Pacific logo, red stars and the words “White Riot.” ²⁹ Defendant stated that he creates art like this for “social commentary.” ³⁰ The Court ruled the first two paintings were not “transformative” and granted judgment for the Plaintiff on those two counts of copyright infringement. ³¹ Yet, as an inevitable result of the quagmire created by the whole “transformative” concept, ruled that whether the last painting was transformative could not be resolved, and so remained a question for the jury to decide. ³² Again, there is no discussion by the Court about the fact that all three are unauthorized derivative works.

Now the quagmire gets deeper. In Cariou v.Prince, ³³ the Second Circuit decides that it is no longer necessary for the new work to comment on the borrowed work or popular culture. In other words, it need not be a commentary on anything. “We agree with [Defendant] that the law does not require that a secondary use comment on the original artist or work, or popular culture, and we conclude that twenty-five of Prince’s artworks do make fair use.” ³⁴ For this rather breathtaking departure from previous case law, there is not one single citation to any authority as to why this is so. Out of the 30 photographs appropriated by the Defendant, the Court gazes into its artistic crystal ball and declares 25 to be “transformative” and fair use, while five are not “transformative” and therefore potentially infringing. The dissenting opinion of Justice Wallace sums it up the best. What the Court has basically said is “that all the Court needs to do here to determine transformativeness (sic) is view the original work and the secondary work and, apparently, employ its own artistic judgment.” ³⁵

This is simply wrong, and changes the clear intent of section 106(2). To rule that the secondary work does not need to comment on the borrowed work, or comment on anything at all, is to basically say that the exclusive right of the copyright holder to control derivative works no longer exists. Anything, and any work, is now fair game to be appropriated by someone else. The only inquiry is, did the secondary work change the borrowed work “enough” to be “transformative,” and is the subjective artistic opinion of the Judge all that matters? How in the world is an attorney supposed to give advice to the client when the only standard is “whatever the Judge thinks?”

So, to the Courts, and the Supreme Court in particular, we need to put an end to the quagmire that is “transformative,” and the sooner the better. Whether the secondary use is a fair use needs to be rolled back to “does the secondary work comment or criticize the borrowed work?” Certainly the 2 Live Crew were directly commenting on “Oh, Pretty Woman,” and limiting fair use to that standard comports with the ethos of supporting free speech. Otherwise, we can just rip Section 106(2) right out of the statute.