Three More Reasons Why the Supreme Court Needs to Clean Up the Mess of Transformative Use

Stephen Carlisle October 22, 2015

In the past month, three more decisions have been handed down on the question of whether a particular use was “transformative” in the context of a fair use defense. These decisions once again highlight that the case law surrounding “transformative use” is a complete mess, and needs to be cleaned up by the Supreme Court absolutely as soon as possible. The cases are Author’s Guild v. Google, Inc., ¹ Katz v. Google, ² and Galvin v. Illinois Republican Party. ³

In Author’s Guild v. Google, Inc., at issue was a project where Google “made digital copies of books submitted by major libraries, and allowed the public to search the texts of the digitally copied books and see displays of snippets of text.” ⁴ The Second Circuit’s resulting finding of fair use is not what is notable about this decision. As Terry Hart points out in his blog Copyhype, ⁵ what is notable is that this Court appears to contradict the holding of another panel from the Second Circuit in the case of Cariou v. Prince, ⁶ which was discussed in a previous blog post. ⁷ The Second Circuit harkens back to a passage frequently overlooked by other Courts in applying the principles of the Acuff-Rose case that started this entire “transformative use” problem. ⁸

The passage cited by the Second Circuit reads thusly:

“If…the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish) ⁹… Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.” ¹⁰

Then the Second Circuit opinion adds this:

“[T]he would-be fair user of another’s work must have justification for the taking. A secondary author is not necessarily at liberty to make wholesale takings of the original author’s expression merely because of how well the original author’s expression would convey the secondary author’s different message. Among the best recognized justifications for copying from another’s work is to provide comment on it or criticism of it. A taking from another author’s work for the purpose of making points that have no bearing on the original may well be fair use, but the taker would need to show a justification. ¹¹

As Mr. Hart correctly observes:

“This would appear to contradict Cariou—there, Prince did not have any justification for using Cariou’s photos; indeed, he did not articulate any reason at all for using them, but the court nevertheless held that to be a fair use. I say appear to contradict since a panel court cannot overrule prior holdings by the same court, so we are left with a state of tension between the holdings in Cariou and Authors Guild.” ¹²

If two panels from the same Circuit cannot agree on what the proper showing needs to be in order to establish a fair use defense on the basis of “transformative use,” then we have a big problem that is only going to get worse over time.

Meanwhile, down at the Eleventh Circuit, we have a ruling that a bare reproduction of a photograph, placed in an article critical of the photo’s subject, is “transformative.” ¹³ At issue was an unflattering photograph of the Plaintiff, Raanan Katz, which the Defendant used to illustrate a series of blog posts that were critical of Katz’s business practices. ¹⁴ Katz purchased the copyright to the photograph, then sued the blogger for copyright infringement. ¹⁵

The Court reaches out to other Circuits for the proposition that “’Courts often find such uses [of faithfully reproduced works] transformative by emphasizing the altered purpose or context of the work, as evidenced by the surrounding commentary or criticism.’ (citation omitted) ‘The use of a copyrighted work need not alter or augment the work to be transformative in nature.’ (citation omitted).”

Some of the uses of the photo were altered. Some were not. ¹⁶ But the Court errs in trying to twist the use of the unaltered photo to be “transformative” by repurposing it with “new expression, meaning or message.” ¹⁷ Plaintiff Katz considers the photo to be “unflattering and embarrassing.” ¹⁸ The photo was then used to illustrate a blog that was critical of his business practices, which he probably would also consider “unflattering and embarrassing.” I do not see how the photo has been repurposed at all. Unflattering photo illustrates unflattering blog post.

What’s worse is the Court did not have to go there to affirm a finding of fair use. The “purpose and character of the use” was to illustrate a series of blog posts critical of Katz, for which the defendant gained no revenue. ¹⁹ The “nature of the work used” was a factual work, which correctly depicted Katz, for which there is no commercial market. ²⁰ While at times all of the work was used, this was justified by using less than the entire photograph would impair the message sought to be conveyed. ²¹ And the major point that the Court should have addressed first is that there is no market for the work. ²² Katz did not buy the copyright to exploit it, he bought the copyright to suppress it. Since the market effect is the most important of the factors, this alone should have tipped the fair use scales in favor of the defendant.

Now, going west to the District Court for the Northern District of Illinois, we find the Court there ignoring the market effect of loss of revenue to the photographer. At issue was a picture taken at a parade for a Democratic candidate. The photo was then altered to show the candidate “driving away from the Illinois State Capitol with stolen money in the backseat and hundred dollar bills flying out of the open convertible.” ²³

Here the Court again finds the use “transformative” even though the photograph is not of the candidate being criticized, but a third party who was also a Plaintiff here. ²⁴ Then the Court allows this factor to neutralize the fact that “[t]here’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many noncopyrighted alternatives (including snapshots they could have taken themselves) were available” [citing] Kienitz v. Sconnie Nation LLC, ²⁵a ruling that is binding on this Court. This is where the “transformative” test goes wrong. The Illinois Republican Party could have used any photograph of the opposing politician. They could have taken a photo of their own. But they didn’t. They took a photograph, without permission, and created a derivative work, also without permission, and failed to pay the photographer anything.

The Court fails to find any market harm, stating “[a] basic comparison of the two works reveals that they cater to wholly different audiences. Anyone who wants an accurate depiction of the political parade or Mr. Yingling’s campaign activities (for example, a media outlet interested in using the Photograph for a news story) would not plausibly license the Flyer instead.” ²⁶ This is not the point. Virtually any alteration of a photograph will mean that the two works will not compete with each other in the marketplace. The point is the photographer is injured financially by the loss of revenue from not licensing the photograph, a factor that the Court glosses over by stating “[e]ven though the Defendants saved money by not licensing the Photograph or commissioning an original one of their own, it is clear that the Defendants’ objectives were more “non-profit” than “commercial.” ²⁷

Had the Defendants offered to license the photograph and the photographer refused, then we would have a different analysis since there is no loss of revenue, much like Katz’s purchase of the copyright in order to suppress the photograph.

So, if the altered photograph is not of the opposing politician, and is not used to comment on the photo, what is the “justification for the very act of borrowing,” as the Supreme Court requires? I can see none in the opinion as written.

So, as these three cases vividly show, the whole concept of “transformative use” is an utter and complete mess. Please fix this, Supreme Court. Please!