‘A Copy is a Copy if it Looks Like a Copy’

Below is an essay I wrote for one of my master’s law papers:

Yvette Lawrence is an artist.

In 2000, Yvette, whose specialist genre is photo-realism, painted a work depicting two figures, one male and one female, seated on a slat bench and holding eight large Alasatian puppies, four each.

Yvette sold this work to the Auckland Gallery where it has been on display for some months.

Peter Cardigan is a sculptor well known for his quirky attitude to life. His declarations of dislike for ‘mawkish kitsch’ are well known. His new sculpture is a three dimensional representation of two figures, one male and one female, seated on a slat bench and holding eight large Alasatian puppies, four each.

After seeing the Peter Cardigan sculpture in an Auckland gallery Yvette Lawrence has claimed that the sculpture infringes her copyright.

Both works are new and, while Yvette’s was painted in 2000, there is no indication as to when Peter Cardigan’s sculpture was begun or finished.

Some years ago National Geographic magazine published a photograph licensed for its use by Art Rogers who describes himself as ‘primarily a portrait photographer, location and studio’ who specializes in ‘groups, multi-generations, men, women, children, and babies’ to which he adds ’I even photograph animals.’

It would seem at first glance that each work has derived from Rogers’ widely distributed photograph. This photograph gained wide exposure over a number of years and became famous, first through its exposure in National Geographic, second as a cheap postcard, and third as the subject of a major copyright case, Rogers v. Koons.

The Berne Convention, the oldest and most widely recognized copyright agreement in existence, has convened and reconvened for more than a century in an attempt to provide a minimum level of copyright coverage for member countries.

According to the World Intellectual Property Organization, the initial meeting of the Berne Convention for the Protection of Literary and Artistic Works took place in 1886, ‘was revised at Paris in 1896 and at Berlin in 1908, completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at Stockholm in 1967 and at Paris in 1971, and was amended in 1979.’

WIPO was created in 1967 to bring the administration of the Paris Convention on patents and trademarks and the Berne Convention on copyright under United Nations aegis in order to ‘create global consensus on intellectual property law’.

Canada did not join the Berne Convention until 1988, The United States until 1989.

Prior to 1989 the US refusal to ratify the Berne agreement focused principally on the issue of ‘fair use’ with that country struggling to maintain a balance between the rights of the author and the rights of those who would learn from and build on the intellectual property represented by the author’s work.
The Berne Convention also recognizes moral rights while US copyright law does not.
Currently 161 countries are party to the convention.

In New Zealand copyright is a statutory right defined in the Copyright Act 1994.

‘Copyright’ is a property right granted to the creator of an original work.

The owner of the work has the exclusive right to copy the work

Copying is defined in s2 of the Copyright Act as ‘reproducing or recording the work in any material form’.

For many works the duration of the copyright is the life of the author plus 50 years. This is so for artistic works as defined in the Act.

There is no requirement for aesthetic or artistic worth.

It is important to distinguish between property rights in an object and the property rights in the form of copyright in the object. It is important to distinguish between ownership of the object in which the copyright exists and ownership of the copyright in the object.

The author is the person who creates the work.

The person who is the author is the first owner.

In the event of a dispute it is essential to be able to prove originality.

For a work to qualify for copyright in New Zealand the author must be a New Zealand citizen or resident or be a citizen or resident of a foreign country prescribed in the regulations to the Act.

There is no copyright in an idea.

Copyright protects works. The Act does not define ‘work ‘ but defines ‘artistic work’ as ‘a graphic work, photograph, sculpture, collage, or model, irrespective of artistic quality’.

Graphic works include paintings.

‘What is worth copying is prima facie worth protecting’.

For a work to be protected it must be original or fixed.

Among other things, copyright does not protect works that do not meet the requirements of originality.

Ownership of copyright can be transferred. It can be licensed or assigned. Assignment is the transfer or sale of the copyright and is not effective until in writing.

Licensing is not sale but permission to use the property of the copyright owner.

The copyright owner has the exclusive right to copy the work, to show the work in public, to make an adaptation as defined in s 2 (1) of the Act, to authorize another person to act as though they were the copyright holder.

Infringement – or engaging in any of the acts restricted under s 16 (1) of the Act – is actionable only by the copyright owner.

Infringements are classified as either primary or secondary.

Primary infringement does not depend on the infringer’s state of mind. Liability is established as soon as the infringing act is proved whether the infringer is aware it is infringing or not.

Reproducing in a different material is still infringement, as is the reproduction in two dimensions of a three dimensional work and vice versa.

Relevant elements of primary infringement include substantiality, objective similarity and causal connection/derivation.

Substantiality means that the whole of a work does not need to be copied, it is the quality and not the quantity that is important, it is always a question of fact and degree and the significance of what has been done is judged according to the value or importance of the part that was taken. If the work is mundane and full of common elements a substantial part must be taken before infringing.

To prove objective similarity there does not need to be an exact copy but there must be sufficient similarity.

‘A copy is a copy if it looks like a copy’

Causal connection suggests that there must be a cause and effect relationship, a derivative connection. There is no infringement if the work hasn’t been copied. A plaintiff can often show similarity but not necessarily access. Indirect copying may therefore be important.

If the work has been seen, or access to a derivative made possible or a written description of the work been received then the court may infer infringement.

Subconscious copying is hard to establish but it has been accepted by the courts.

Secondary infringement may be relevant where a gallery knowingly possesses or deals with infringing copy or permits the use of premises for the display of infringing copy.

The act allows for ‘fair dealing’ and cites ‘criticism, review and news reporting’ as areas in which the concept of ‘fair dealing’ resides. The act states ‘fair dealing with a work for the purposes of criticism and review of that, or another work or the performance of a work, does not infringe copyright if such fair dealing is accompanied by a sufficient acknowledgement’.

Possible defenses include the plaintiff not owning the copyright, there having been no copying, the act being permitted, or the defendant not having the requisite knowledge.

Moral rights are infringed when the author wishes to be identified as the author, or when there has been derogatory treatment.

In advising Yvette Lawrence it would need to be emphasized that infringement is only actionable by the copyright owner and that, should she be able to adequately prove that her photo-realistic painting is, in itself, original then it may well be argued that Peter Cardigan has breached her copyright in creating his sculpture as copyright is only vested in the creator of an original work, and his, unless proven otherwise by being a permitted act, is clearly a copy ‘because it looks like a copy.’

Peter Cardigan, however, may claim in his defense that Yvette Lawrence does not own the copyright; that this, in the case of a photo-realistic presentation such as hers, resides with Art Rogers and that his own work is a parody and therefore a legitimate critical review of the original, a view that can be substantiated through Cardigan’s well documented attitude to ‘mawkish kitsch’.

If this was accepted as fact then there has been no copying and Cardigan’s parody of Art Roger’s original may well be permitted under New Zealand law despite the failure of a ‘fair use’ defense in a similar case in the US. US copyright law is presumed to be more rigorous in asserting the rights of the ‘critic’ or ‘reviewer’ even to extending the term to include ‘commentator’ and therefore ‘satirist’ or ‘parodist’ but as this seems yet to be tested in this country this presumption is, perhaps, presumptuous.

One thing is certain from Rogers v Koons, however: ownership of the copyright in the ‘String of Puppies’ photograph is irrefutably held by Art Rogers.

These points of view may well be obsolete however as there is no factual evidence available to determine which person – Lawrence or Cardigan – first ‘fixed’ or completed their work to such a degree that copyright could reside in it. We know that Lawrence painted her work in 2000 but when in 2000 it was finished we are not informed.

Cardigan, on the other hand, had his work exhibited around the same time Lawrence’s work went on show and no date is given for this occurrence either.

It is not unreasonable then to assume that Cardigan’s sculpture was under construction at the same time as was Lawrence’s painting.

It is altogether feasible, since both artists may well have been devising from an earlier work, that neither had ‘requisite knowledge’ of the other’s activity sufficient to cause a breach of copyright.

It is also reasonable to assume, in a city the size of Auckland, that a sculptor with a known abhorrence for ‘mawkish kitsch’ might not know what a photo-realist painter working in this genre might be doing at any given time – or vice versa.

New Zealand is a signatory to The Berne Convention and as such it would seem appropriate for case law from member countries to be used to inform the current situation and for this case law to be given similar credence to that created in New Zealand, particularly as little relevant case law exists in New Zealand.

This broadens the range of opinion available and it would seem that, with the exception of ‘fair use’ and ‘moral rights’ judgments from the US post-1989 where there are significant differences in interpretation, this broader range of opinion might positively inform this debate.

This broadening of the debate introduces a further complication, however, as the Art Rogers photograph from which both Lawrence and Cardigan’s works originate – using the ‘a copy is a copy if it looks like a copy’ argument – was accessible prior to the US becoming a signatory to The Berne Convention and therefore not bound by the Berne principles whereas case law based on the use of this photograph post-dates the US becoming a signatory to the convention.

s2 of the Copyright Act defines copying as ‘reproducing or recording the work in any material form’.

To establish a claim for copyright infringement, a plaintiff must show both ownership of a copyright and that defendant engaged in unauthorized ‘copying’ as defined in the act.
Assuming that Lawrence created her photo-realistic work first and can prove it then it could be argued that Cardigan has, in the terms of the act, breached her copyright as she is the author and first owner of the work.

The issue as to whether Yvette Lawrence’s work is indeed original remains to be proven as the existence of Art Rogers photograph entitled ‘String of Puppies’ must put this in doubt. Copyright does not exist if the work is not original or if it infringes copyright in another work.

In the event of a dispute it is essential to be able to prove originality.

The fact that litigation has taken place in the US regarding this photograph, and the fact that the author/photographer is still alive and working would suggest that a claim of originality might not go uncontested.

Whilst Lawrence has sold her work to Auckland Gallery there is no indication that she has licensed, assigned or transferred her ownership of the work to the gallery and therefore it must be assumed, if the work is original, that she remains the owner of the copyright. As the work is clearly less than 50 years old there is no question as to whether authorship still resides with her.

Though Peter Cardigan may take issue with the aesthetic or artistic worth of Yvette Lawrence’s work, and may act accordingly in the creation of his own artwork, the court will have no requirement that the work infringed against be aesthetically or artistically notable.

Both – in fact all three – ‘authors’ qualify under the Act as each is either a New Zealand citizen or resident or a citizen or resident of a country signatory to The Berne Convention as prescribed in the regulations.

Reflections in recent judgments in the US Supreme Court suggest that, at least in the US, claims of copyright infringement from other countries may now be acceptable.

Copyright protects works and, while the Act does not define ‘work‘ as such it does define ‘artistic work’ and photographs, paintings and sculptures are so defined, a photograph coming under the generic term ‘graphic’.

As was proven in University of London Press Ltd v University of London Tutorial Press Ltd and again in Rogers v Koons ‘What is worth copying is prima facie worth protecting’. In Rogers v Koons there exists a case wherein it was proved that the plaintiff owned the copyright in a photograph that was virtually worthless while the defendant had created 3 copies of the image in three dimensions each of which sold for in excess of $US100,000.00.

Ownership of copyright can be transferred. It can be licensed or assigned but assignment is not effective until in writing. There is no evidence to suggest that any of the works in question (Rogers, Lawrence & Cardigan) has a license, assignee or transfer relationship with any of the other parties.

Nor should this necessarily be anticipated if, in the view of the author of a parody, his or her work is an original work.

To quote Justice Kennedy in Campbell v Acuff-Rose Music: ‘ ‘Fair Use’ also protects works we have reason to fear will not be licensed by copyright holders who wish to shield their works from criticism.’

Justice Kennedy added, quoting Posner: ‘Self esteem is seldom strong enough to permit the granting of permission even in exchange for a reasonable fee. There is an obstruction when the parodied work is a target of the parodist’s criticism, for it may be in the private interest of the copyright owner, but not in the social interest, to suppress criticism of the work.’

Should it be necessary, it could reasonably be argued that Cardigan’s sculpture parodied either of the other works and is therefore a permitted act of copying, but it cannot be argued that Lawrence’s painting is a ‘fair dealing’ copy of Cardigan’s sculpture or anything other than a copy of Rogers’ photograph, her own work lacking the necessary degree of originality to be anything other than a derivative of the original work.

By showing the works in public each party has acted as though they were the author and therefore owner of the copyright.

Assuming still that Yvette Lawrence is, as she claims, the author of the work and that Peter Cardigan’s defense is that his is a parody of her (or Art Rogers) work and therefore also original, how relevant is Cardigan’s oft stated dislike of ‘mawkish kitsch’’?

If primary infringement does not depend on the infringer’s state of mind and liability established as soon as the infringing act is proved whether the infringer is aware it is infringing or not then it must be assumed that Cardigan was conscious of what he was doing. If this is so then it is also reasonable to make the same assumption regarding the knowledge and motives of Lawrence.

Cardigan’s reproduction in three dimensions of the original two dimensional work could still constitute infringement as shown in Rogers v. Koons and Castle Rock Entertainment v. Carol Publishing Group where a book was produced that related, in part, to the moving images of the Seinfeld television series.

Other relevant elements of primary infringement in this situation include substantiality, objective similarity and causal connection/derivation.

Substantiality means that the whole of a work does not need to be copied, it is the quality and not the quantity that is important. In the case of the Cardigan sculpture virtually the entire image is replicated with some changes which arguably elevate the qualitative elements of the ‘kitsch’, for example the addition of the earrings, the garish development of the palette used, the ‘dumbing down’ of the facial expressions, the stylizing of the puppies faces and, to quote Rogers v. Koons, the elongating and enlarging of the noses.

The complete removal of the background imagery also heightens the unreal nature of the sculpture.

To show that a defendant has ‘reproduced’ a copyrighted work without authorization, a plaintiff must establish that the defendant had access to the copyrighted work and that there is a ‘substantial similarity between the copyrighted work and the alleged infringement.’

‘Substantial similarity does not require literally identical copying of every detail.’

The necessary degree of similarity is established if ‘an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.’

In other words: ‘A copy is a copy if it looks like a copy’.

Unless, of course, it qualifies as a ‘permitted act’.

In this instance causal connection is difficult to establish.

While there can be little doubt that each work is potentially derivative of the other – or they are both derivative of a third work in which originality may reside – there is no proof that either artist had access to the other’s work prior to exhibition and even then it would be stretching credibility to suggest that Cardigan might go to a gallery containing works of photo-realism, see an item he wished to parody and complete the exercise that quickly.

It is easier and more reasonable to suggest a cause and effect relationship, a derivative connection, in this case a third work which has been indirectly copied.

It is just possible that Lawrence’s work was seen by Cardigan, or a written description of the work received in the form of a review with photographs or in an exchange of exhibition catalogues between Cardigan and a colleague in which case the court may infer infringement but this is highly unlikely.

It would be most difficult to argue subconscious copying in this case due to the degree of exact detail that exists in each of the art works and the specificity of Cardigan’s variations.

Assuming still that copyright resides with Yvette Lawrence and that she chooses to engage in an action against Peter Cardigan his probable defense would be that, as defined by statute, namely The Copyright Act 1994, his actions were permitted in that he has created a parody of Lawrence’s work and thereby the copyright for his work resides with him as his is a work of originality as defined by the act.

Unlike Jeff Koons who knowingly removed a written claim of copyright ownership from Art Rogers postcard before engaging in replicating the image in three dimensional form , Cardigan has performed no such act of copyright denial regarding Lawrence’s painting.

The opposite is in fact the case with Cardigan offering no acknowledgment and assuming authorship of the work and therefore ownership of the copyright for himself.

Cardigan might also suggest that he had no ‘requisite knowledge’ of Lawrence’s work but that he was parodying an earlier work by Art Rogers namely the photograph ‘String of Puppies.’

Lawrence may also claim that her moral rights have been infringed in that there has been derogatory treatment of her work and, as a corollary to that, herself.

To this Cardigan, should he choose to acknowledge Lawrence’s work rather than Rogers’ as his source, would most likely argue that his work could be categorized as a parody for the purpose of comment and critical review and therefore an act permitted as ‘fair dealing’.

The difficulty in determining access or even the order in which the pieces were first created complicates, and to some extent discredits, Lawrence’s claim.

Lawrence may have a further claim for copyright infringement in that Cardigan may have appeared to make a ‘derivative work’ based on her ‘copyrighted work’.

A ‘derivative work’ is defined as ‘a work based upon one or more pre-existing works, such as an art reproduction or any other form in which a work may be recast, transformed, or adapted’. For a work to qualify as a derivative work it must be independently copyrightable.
There can be little doubt that, on the assumption that Lawrence holds the copyright, Cardigan may well have created a derivative work. However, it may also hold true that Cardigan’s work ‘reflects at least the modest amount of originality required for copyright protection. Elements of originality may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved.’
As the US Supreme Court notes: ‘ “sweat of the brow” alone is not the ‘creative spark’ which is the sine qua non of originality.’
Therefore the alleged infringement must possess a degree of originality that is ‘at least some substantial variation from the underlying work, not merely a trivial variation.’

There can be little doubt as to the degree of originality Cardigan has brought to his sculpture, enough at least to raise the spectre of ‘creative spark’.

Cardigan may also introduce in his defense the concept of ‘transformative treatment’.

Judge Pierre N. Leval confronted the issue which lies at the heart of fair use, namely, under what circumstances may a second author’s use of a copyrighted work provide such a benefit to society that otherwise infringing conduct is justified?

Judge Leval’s answer focuses on the concept of ‘transformative use,’ which he defined as a use which is “productive and employs the quoted matter in a different manner or for a different purpose from the original.” For example, a transformative use may contribute to the creation of new works that draw upon portions of earlier works but endow them with “new expression, meaning or message.”
Leval concludes: ‘Therefore, in applying the fair use factors set forth in section 107 of the Copyright Act,4 the degree to which defendant’s use is transformative is a crucial, but not determinative, consideration.’

The concept of ‘fair dealing’ (NZ) or ‘fair use’ (US) is based on the following precepts:

(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.

For a defense of ‘fair dealing’ to succeed all four of the above factors would need to be positively considered.

In the years since Campbell v. Acuff-Rose (1994), ‘transformative use’ has taken on increasing importance as a non-statutory ‘fifth factor’ which courts must consider in evaluating a defendant’s claim to the ‘fair use’ defense.

They also demonstrate that a good deal of ambiguity remains as to what makes a particular use transformative, and what consequences follow, or should follow, from a showing that a use is transformative.’

In Dr. Seuss Enterprises v. Penguin Books, defendant published an illustrated book called ‘The Cat NOT In the Hat’, which retold the incidents of the O.J. Simpson murder trial in a verbal and graphic style admittedly ‘inspired by’ the plaintiff’s well-known children’s book ‘The Cat In the Hat’.
The court approvingly quoted Rogers v. Koons re the proposition that a work is a parody where ‘the audience is aware that underlying the parody there is an original and separate expression, attributable to a different artist.’

In acknowledging the evolving nature of copyright law, both nationally and internationally, it is not unreasonable to anticipate on-going examination of the principle of ‘fair dealing’, a re-assessment that might see a contrary outcome in cases not dissimilar to Rogers v. Koons in the future.

To once again quote Justice Kennedy in his concurring judgment in Campbell v. Acuff Rose Music Inc: ‘The common law method instated by the ‘fair use’ provision of the copyright statute presumes that rules will emerge from the course of decisions. I agree that certain general principles are now discernable to define the fair use exception for parody. ‘

One of these rules, the Court observes, is that parody may qualify as fair use regardless of whether it is published or performed for profit.

Another is that parody may qualify as fair use only if it draws upon the original composition to make humorous or ironic commentary about that same composition.

A humorous or satiric work deserves protection under the fair use doctrine only if the copied work is at least partly the target of the work in question. This prerequisite confines fair use protection to works whose very subject is the original composition and so necessitates some borrowing from it.

Justice Kennedy concluded: ‘If we keep the definition of parody within these limits, we have gone most of the way towards satisfying the four factor fair use test in § 107. ‘

However, there can be little doubt that the most important sentence from the Kennedy J judgment is: ‘If a work targets another for humorous or ironic effect, it is by definition a new creative work.’

At this juncture it would be unwise to suggest to Yvette Lawrence that she has a valid claim for copyright infringement.

The mere existence of two other works (not counting the sculptures by Jeff Koons), each substantially the same as Yvette’s and each with at least an equal claim to originality of authorship and therefore ownership of the copyright, should suggest she proceed with caution.

While she may have ownership of the copyright in her own painting – and this could be disputed by at least Art Rogers – there are two major defenses that Peter Cardigan might successfully mount, namely that, of the two locally produced works, his work was fixed first and therefore Yvette’s is effectively a copy of his, or alternatively that his work is, in fact (as Jeff Koon’s professed his own to be in 1992) a parody of an earlier work and therefore no business of hers at all.

Should copyright infringement ever be proven against Lawrence, then the role of the Auckland Gallery may also come under scrutiny as the principle of secondary infringement may come into play. This would be the case if it were proved that the gallery knowingly possessed or dealt with infringing copy or permitted its premises to be used for the display of infringing copy.

A causal connection between Cardigan and Lawrence could be established but only via the ‘String of Puppies’ photograph of Art Rogers. With the facts as they are currently known, no current causal connection could be established between Yvette’s and Peter’s works.

Despite the failure of the 1992 Koons defense, times – and the copyright environment -have changed post 1997 and there are indications that the outcome of a case similar in nature to that of Rogers v. Koons (1992) – if it were to be based on ‘fair dealings’ and developed to include the concept of ‘transformative use’ and the judgment of Kennedy J – may well be substantially different.

It would make little or no difference if, while browsing through an old edition of National Geographic magazine I was to come across a photograph virtually identical to Yvette’s painting.

It would reinforce and substantiate my research and, while proving to be an interesting novelty, would not change my advice to Yvette Lawrence as I have satisfied myself already that Art Rogers sold his photograph, not only to National Geographic, but to many other purchasers while retaining ownership of the copyright in the photograph as established in Rogers v. Koons.

Appendices

Leibovitz v. Paramount Pictures
In 1991, noted celebrity photographer Annie Leibovitz shot a photograph of the actress Demi Moore for the cover of Vanity Fair magazine. The photo of Ms. Moore, nude and eight months pregnant, was highly controversial and the issue on which it appeared quickly became the best-selling single issue in the magazine’s history up to that time. In 1993, Paramount pictures developed an advertisement for a soon-to-be-released Leslie Nielsen comedy film entitled Naked Gun 33: The Final Insult, which featured Mr. Nielsen’s “smirking, guilty face” superimposed on the body of a pregnant, nude model remarkably similar to Ms. Moore, and the slogan “Due This March,” referring to the release date of the film. The pose, backdrop and lighting were similar to those in the Leibovitz photo, and the second photo was digitally modified to more faithfully replicate the body configuration and skin tone of the original. Paramount neither requested nor received permission from Leibovitz or Vanity Fair in connection with the ad. In early 1994, the ad appeared in several national publications, including Vanity Fair. Leibovitz sued, Paramount asserted a defense of fair use, and the parties cross-moved for summary judgment.
In December, Judge Preska of the Southern District held that the ad was a fair use of the Leibovitz photograph. Drawing heavily from the Supreme Court’s 1994 Campbell decision, the court entered summary judgment for Paramount and held that even though the Paramount ad was purely commercial, it was a “highly transformative” parody of the original photograph. In particular, the court said that “the addition of Leslie Nielsen’s head, with its markedly different facial expression, was a significant transformative element.” The court’s analysis, however, makes clear that the transformative aspect of the use is not a simple matter of the physical alteration of the work.

In this connection, the court devoted considerable attention to determining whether the ad was a legitimate parody of the Leibovitz photo, i.e., a criticism or comment upon that particular photo, or whether it gratuitously borrowed elements from the photo to satirize something else, such as an aspect of society in general. Courts in other parody cases have generally rejected claims of parodic intent where the purported parody did not directly set out to skewer the plaintiff’s work. The court explained two principal ways in which the ad took satiric aim at Leibovitz’ famous image.9 First, the ad “relies for its comic effect on the contrast between the original – a serious portrayal of a beautiful woman taking great pride in the majesty of her pregnant body – and the new work – a ridiculous image of a smirking, foolish-looking pregnant man.” Thus, even at a superficial visual level the ad demonstrates the necessary “joinder of reference and ridicule” which the Supreme Court in Campbell cited as a sign of legally cognizable parody.

Second, the Nielsen ad’s use of the Leibovitz photo “was intentionally linked to the issues of childbearing and pregnancy that are central to the plot of Naked Gun 33.” In the film, Nielsen’s character is under pressure from his wife to begin raising a family and he views the prospect with a mixture of dread and ambivalence. This is in stark contrast to Leibovitz’ iconic glorification of pregnancy and parenthood, noted the court, and “this contradiction is part of what makes the Nielsen ad a parody.” Beyond the visual incongruity, therefore, the parody operated at a second level in this case, one which made the original photo more than an arbitrary target of the parody.

The question of parody vel non is so important in Leibovitz and similar cases because the courts have made parody almost a per se category of transformative use. The Leibovitz court, for example, holds that “[t]he Nielsen ad is, like all legitimate parodies, `transformative’ in character,” and concludes its analysis of the market impact factor by observing that “parody must be a transformative use.”10 And once the defendant convinces the court that the use is truly transformative, the severity of other problems with the defendant’s case, such as commercial use and extensive copying, is greatly reduced. Thus, following Campbell, the Leibovitz court noted that the more transformative a second work is, “the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

Although after Campbell, the defendant’s commercial purpose can no longer be a per se bar to a finding of fair use, it does still weigh against the defendant, even in the parody context. Transformative use therefore gives the commercial defendant a counterargument under the first factor, and in Leibovitz it was enough to tip the scales in defendant’s favor: “Under the particular circumstances of this case, I find that the purposes of copyright are best served by a finding that the highly transformative character of the Nielsen ad trumps its admittedly commercial purpose and that the first fair use factor therefore weighs in favor of the defendant, albeit perhaps by only a slight margin.”11

Under the third factor, the Leibovitz court also relied on the transformative use concept in finding that the Paramount ad took no more than was necessary to make the point of the parody. The extent of the taking was admittedly large, but given the defendant’s legitimate parodic intent the court found that the ad copied only what was necessary to conjure up the original. Although Campbell repeated the well-settled rule that a parodist can “at least” conjure up the original, implying that he may sometimes do more, the Leibovitz court concluded that Paramount had done no more here. This finding does not necessarily imply that no lesser taking could have succeeded in making the point of the parody, however; the court acknowledged that “perhaps” the lighting or backdrop might have been different without killing the parodist’s joke. But in the court’s view a nude photo of Leslie Nielsen with pillows strapped around his waist, as suggested by the plaintiff, would not have been “sufficiently evocative of the Moore photograph to serve defendant’s parodic purpose.”

Finally, in concluding that the third factor also favored defendant, the court again adverted to the fact that defendant had “added something distinctly new for humorous commentary.” Strictly speaking, the third statutory factor looks only to the amount of the taking in relation to the plaintiff’s work, so the nature of the defendant’s additions has often been considered irrelevant. The statutory factors are non-exclusive, however, and in the context of a transformative parody which takes the form of a humorous addition to an existing work, it would be neither practical nor advisable to ask a court to ignore the defendant’s contribution. As the Supreme Court recognized in Campbell, “the question of fairness asks what else the parodist did besides go to the heart of the original.”12

Under the final statutory factor, which considers the effect of the second work on the plaintiff’s market, the court relied on the transformative, parodic character of the ad to find that it was not likely to serve as a market substitute for the original work or cause any other “cognizable” market harm. The court’s central premise, borrowed directly from Campbell, was that “no protectible derivative market” exists for works of criticism and parody, since authors cannot be expected to cooperate in subjecting their own works to ridicule by issuing licenses to parodists. Accordingly, the author’s usual right to control the creation and sale of derivative works must be suspended because authors will not generally exercise it in the best interest of society. There is no doubt a “derivative market” for commercial parodies, and the court did not pretend otherwise, but under this reasoning that market is not “protectible.” An author whose work is copied for a socially valuable, transformative derivative work involving parody or criticism thus loses the right to capitalize on licensing that derivative work, at least where the court suspects that the author is being deprived of nothing because he or she would not have licensed the use anyway. If the court is correct in this, then the author has no economic stake in the outcome, and the social benefit which flows from the creation of parodic and critical works outweighs the author’s sense of moral outrage at seeing his or her work distorted.

Thus, the Leibovitz court considered only direct market substitution under the fourth factor, and since Leibovitz had seen “no adverse effect on the sale or licensing of the Moore photograph” as a result of the ad, the final statutory factor also favored Paramount. Overall, the court thus held that “the fundamental purposes of copyright are best served by a finding that defendant’s use of the Moore photograph is a fair one.”

Demi Moore, Dr. Seuss and Seinfeld
By David Goldberg and Robert J. Bernstein
May 16, 1997

References:

http://www.artrogers.com/rogers_bio.html

Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)

http://www.wipo.org/

Browning, J. (1997, March). Confab clips copyright cartel: Africa 1, Hollywood 0. Wired 5.03, 61.

Reid, C. (1996, December 9). Battle continues over digital copyright proposals. Publishers Weekly, 243 (50), p.11.

Acheson, K. and Maule, C. [Online]. (1995, May 18) International conventions, agreements and organizations affecting copyright and related rights: The Berne Convention.

http://www.uoregon.edu/~nhelmer/531/kathy.html

University of London Press Ltd v University of London Tutorial Press Ltd (1916) 2 Ch 601, 610

Thornton Hall Manufacturing Ltd v Shanton Apparel Ltd (1988) 12 IPR 48

Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)

Thornton Hall Manufacturing Ltd v Shanton Apparel Ltd (1988) 12 IPR 48

http://www.uoregon.edu/~nhelmer/531/kathy.html

Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)

Microsoft Corp. v. Harmony Computers & Electronics, Inc., 846 F.Supp. 208, 210 (E.D.N.Y.1994)

Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)

http://www.artrogers.com/rogers_bio.html

University of London Press Ltd v University of London Tutorial Press Ltd (1916) 2 Ch 601, 610

Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)

Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).

When Is Parody Fair Use, Posner, 21 J. Legal Studies 67, 73 (1992)

Castle Rock, 1997 U.S. Dist. LEXIS 2066 at *18.

Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)

Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992)

Rogers, 960 F.2d at 307

Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir.1966)

Thornton Hall Manufacturing Ltd v Shanton Apparel Ltd (1988) 12 IPR 48

Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.)

US Copyright Act 17 U.S.C. § 101

Woods v. Bourne Co., 60 F.3d 978, 990 (2d Cir.1995)

Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.), cert. denied, 506 U.S. 934, 121 L. Ed. 2d 278, 113 S. Ct. 365 (1992);

Beverly Wolff, Copyright, in ALI-ABA Course of Study, Legal Problems of Museum Administration, C989 ALI-ABA 27, at *48 (available on Westlaw). Also Lynne A. Greenburg, the Art of Appropriation:

Puppies, Piracy, and Post- Modernism, 11 CARDOZO ARTS & ENT. L.J. 1, 20-21 (1992)

L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 491 (2d Cir.1976)

Pierre N. Leval, “Toward a Fair Use Standard,” 103 Harv. L. Rev. 1105 (1990).

http://www.cll.com/articles/article.cfm?articleid=22#fn1

http://www4.law.cornell.edu/uscode/17/107.html

Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1171 (1994), quoting Leval at 1111

960 F.2d 301, 310 (2d Cir. 1992).

MCA, Inc. v. Wilson, 677 F. 2d 180, 185 (CA2 1981)

Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1171 (1994),

Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.),

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