Tag: transformativeness

Google v. Oracle IX: A Poor Fair Use Defense is an Opportunity for Guidance

I share the sorrow of millions at the passing of Justice Ruth Bader Ginsburg. The world has lost a genius of the law, who, in addition to her immeasurable contributions to American justice, was a great lover of the arts and a true champion of the rights of creators. My deepest condolences to her family, colleagues, and friends.

In my last post addressing the standard of review question presented in Google v. Oracle, I reiterated the fact that a fair use analysis is a holistic balancing of the four factor test and also suggested that while juries may fairly consider the facts that inform the test, the courts may be best suited to balance the interdependence of the statutory factors themselves. Nevertheless, we have recently seen a number of cases in which defendants have tried to advocate fundamental errors of law in fair use analyses—especially when it comes to the interaction between the first and fourth factors.

In its fair use defense, Google places considerable emphasis on the alleged novelty (in the market) when it used Oracle’s code in mobile devices. This “new context” assertion is the soul of its appeal to transformativeness under factor one which, it argues, bolsters its claim that its use of the copied code did not pose a threat to Oracle’s “potential market” under factor four. That is, if Google’s transformativeness claim were correct. It is not—neither as a question of fact nor of law.

The evidence that Oracle was already licensing Java for mobile in 2005 should be immediately fatal to Google’s argument that its use was transformative. But even without those facts—even in the wildly hypothetical scenario in which neither Oracle’s managers nor any of its prospective licensees could have imagined how Oracle’s code could be used in mobile devices—it is still an error of law to find transformativeness in cases in which the user merely copies a work to use it for the same purpose in a manner the author has not yet exploited, or might even decide not to exploit.

New Ventures Seek to Confuse Fair Use Analyses

In Disney et al. v. VidAngel (2017), the defendant asserted that it was transformative to provide “filtered” copies of mainstream motion pictures, having decided to litigate this infringing venture after the motion picture studios turned down VidAngel’s offers to license “filtered” versions. In granting plaintiffs’ motion for preliminary injunction, the California district court rejected all of VidAngel’s defenses, including its first and fourth factor assertions. Most pointedly, the court underscored the fallacy in VidAngel’s appeal to meeting a market “need,” stating, “The fact that 49% of VidAngel’s customers would view movies without filters shows that VidAngel’s service does serve as an effective substitute for Plaintiff’s unfiltered works, for approximately half of VidAngels [sic] users.”

Similarly, in Fox News v. TVEyes (2018), the defendant appealed to transformativeness, largely on the grounds that its news monitoring service, indexing and storing hundreds of news feeds, was both novel and highly useful. Thus, they hoped the courts might overlook the ways in which its service provided a market substitute for the plaintiff’s protected works. The Second Circuit reversed the lower court’s finding of fair use, holding that although the defendant’s Watch function was “slightly transformative,” this consideration was overwhelmed by its commercial nature and the fact that, under the fourth prong, “TVEyes makes available virtually the entirety of the Fox programming that TVEyes users want to see and hear.”

Nevertheless, it does seem that uses in new technological ventures, in conjunction with the inconsistent doctrine of transformativeness, fosters confusion about fair use jurisprudence where the Supreme Court may provide some guidance with its ruling in Google v. Oracle. I mentioned Brammer v. Violent Hues in the last post, in which it seemed the district court was perhaps a bit too distracted by the relative “newness” of internet commerce and, so, committed fundamental errors in its finding of fair use.

Brammer v. Violent Hues: A Simple Case Needlessly Complicated

The Fourth Circuit offered a roadmap in its recent correction of the fair use error in Brammer. There, the district court held that the defendant’s use of a photograph was transformative because he used an “expressive” work for an “informational” purpose.  Reversing on appeal, and perhaps stating the obvious, the Fourth Circuit held that all the defendant did “was publish a tourism guide for a commercial event and include the Photo to make the end product more visually interesting.” Such a use, the court stated, “would not constitute fair use when done in print, and it does not constitute fair use on the Internet.”

But the district court’s unfathomable, metaphysical bisection of a single image indicates how easily an unclear transformativeness doctrine can muddle an otherwise classic case of infringement. A fair bit of confusion seems to arise with regard to alleged transformativeness in uses that merely alter the context of a work, rather than its content. And for those, the Fourth Circuit observed that there are two viable paths for finding transformativeness:  documentary uses, and—as is relevant in Google v. Oracle—technological uses. In Brammer, the Fourth Circuit described “technological use” thus:

In [this] category, copyrighted works provide raw material for new technological functions. These functions are indifferent to the expressive aspects of the copied works. For example, we have held transformative the total reproduction of student essays for a plagiarism detection service because the database served an “entirely different function” that was unrelated to the expressive content of those essays.

In this observation, the Fourth Circuit concurred with the Second Circuit’s landmark decision in Authors Guild v. Google Inc., which similarly held a technological use to be transformative where it was indifferent to the copied works’ expressive aspects.  The Fourth Circuit reversal in Brammer is in harmony with an important limit to the Authors Guild opinion, which the Second Circuit acknowledged “test[d] the boundaries of fair use.” That critical limitation is the use of a work for a purpose unrelated to its expression; and in Brammer, the district court erred rather dramatically by inventing a “non-creative” (i.e. purely informational) purpose for the infringed work that, if upheld, would either void copyright in nearly all photographs or sow legal havoc.

Critically, Google’s use was entirely related to Oracle’s expressive content, and effectively resulted in the creation of an unauthorized derivative work.  As the brief for Oracle states, “For software, the quintessential derivative is a ‘version’ adapted for the next generation of devices or different operating systems.” Simply put, Google’s use of Oracle’s code in Android does not serve an “entirely different function,” but rather, performs the same set of functions for which the original expressions were written. Indeed, the declaring code Google copied would have been of little service in its time-to-market ambition if it had used the code for a truly novel purpose: this would have fouled Google’s intent to quickly attract Java-literate developers to write apps for its new platform.

The Supreme Court Could Help Shape Transformativeness

Appellate courts and legal experts, in response to outcomes like the lower court’s decision in Brammer, have highlighted another important limit to transformativeness. Brammer illustrates how a too-elastic read of “transformativeness” can swallow the author’s right to prepare derivative works under §106(2) of the Copyright Act. Stephen Carlisle of NOVA Southeastern University reminds us that the word “transformative” is part of the statutory definition of a protected derivative work:

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.” [Emphasis added]

As a result, the transformativeness analysis must be careful to avoid eliminating the copyright owner’s right to create derivative works. Further, because many courts have found that the transformativeness doctrine under factor one exerts considerable influence over factor four considerations—though, as discussed below, such a view is out of step with the Supreme Court’s precedent—an erroneous finding that a use is transformative will often tee up an aggravating error that the use does not threaten the “potential market” for the original work.

A possible difficulty with software is that caselaw comprises more fair use decisions involving expressive uses than “technological uses” as described by the Fourth Circuit. This does not mean, however, that expressive use cases are not instructive—especially in cases like Oracle, where Google’s copying served an expressive purpose.

In Campbell v. Acuff-Rose, the Supreme Court held that 2 Live Crew’s parody of Roy Orbison’s “Oh, Pretty Woman” though clearly implicating Orbison’s derivative work right, was transformative under factor one on the grounds that its parody commented upon the original song. Correspondingly, under factor four, the opinion held that the 2 Live Crew song did not threaten the market for the original “Oh, Pretty Woman” in part because, as a scathing parody, it was a work the copyright owners never would have produced or licensed. Accordingly, Campbell stated that, “The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.” 

Importantly, however, the Court did not state that any transformativeness finding swamps the factor four analysis—to the contrary, it remanded to assess the market harm caused by the parody. Thus, the transformativeness analysis has limits. We are nowhere near those limits in Google v. Oracle, but the Court can still provide guidance in this area.

Due to continued ambiguity about the meaning of “transformative,” a number of fair use claimants (e.g. VidAngel and TVEyes) have lately tried, and largely failed, to convince the courts that a rightsholder’s “potential market” under factor four is synonymous with the “existing” market. Were this true, the classic example in which the novelist retains the right to authorize, or not authorize, a film adaptation of her book would be abrogated by contemporary ventures in fair uses analyses encroaching on the territory of the derivative works right. As the Supreme Court held in Stewart v. Abend (1990), the derivative works right survives intact among the bundle of rights reserved by the author or his assigns, even with respect to an unlicensed release of a film during the second term of copyright that had been licensed under the first term.*

In response to the petitioner’s fair use defense under factor four, the Court held, “Fourth, and most important, the record supports the conclusion that rerelease of the film impinged on Abend’s ability to market new versions of the story.”  This remains the correct interpretation of “potential” market under the fourth prong, and which proscribes trespassing into §106(2) territory.

Nevertheless, as recently as 2017, in Penguin Books et al. v. KinderGuides, the defendant in that case produced unlicensed children’s book versions of classic novels and asserted that, because the rightsholders had not exploited the children’s market in this manner, its products posed no threat to the “potential” market. In response, Judge Rakoff of the Southern District of New York rejected this quite plainly, stating, “the fact that any given author has decided not to exploit certain rights does not mean that others gain the right to exploit them.”

Defining the Boundaries of Fair Use in the Digital Age

As stated above, there can be no confusion about the facts in Google v. Oracle with regard to the first and fourth factors. Oracle has presented evidence that it had already entered the mobile market at the time Google copied the code at issue. But more broadly, Google’s fair use defense begs the Supreme Court to enshrine largely failed and dubious lower court misapplications of first and fourth factor analyses into copyright caselaw. Even if that is not Google’s exigent goal, the long-term results of accepting their fair use argument in this extraordinarily high-profile case would be detrimental to millions of copyright owners who will never make the headlines.

In this case, the Supreme Court has the opportunity to provide a clear declaration that Google’s use lies well beyond the reach of transformativeness and, although the facts show that it was not a new context, even if it were novel, incorporating the code for mobile remains protected under Oracle’s right to prepare derivative works. As in Brammer, it’s really just a simple case of copying, but Google has insisted upon complicating matters.

Google and other technology developers have tried, and largely failed, to convince courts that “transformativeness” is synonymous with “changing the world,” a claim that technologists in particular like to assert about themselves quite often. But the Second Circuit in Authors Guild v. HathiTrust drew a clear distinction between industry hubris and fair use when it stated, “a use does not become transformative by making an invaluable contribution to the progress of science and cultivation of the arts. Added value or utility is not the test: a transformative work is one that serves a new and different function from the original work and is not a substitute for it.”

That court’s echo of the Constitution’s IP clause is especially compelling. While companies like Google often appeal to the rhetorical argument that every use fulfills the constitutional purpose to “promote progress,” this generalization is clearly not the standard that needs to be met to achieve that goal through trampling the rights of prior authors’ in their contributions to progress. If that were the standard, fair use would cease to be an exception to copyright because copyright’s statutory protections would no longer exist.

* The case involved the adaptation of Cornell Woolrich’s It Had to Be Murder into the Hitchcock classic Rear Window.

** This of course does not stop Google from defending its own intellectual property.

Fair Use Error in Seuss/Trek Mash-Up Case Not Good for Small Creators

In order for copyright law to work for all the Whos in Whoville—the small and the tall—legal reasoning must apply equally whether the plaintiffs are major enterprises or kitchen-table start-ups. While it is understandably common in the court of public opinion to favor smaller defendants being sued by larger copyright owners, the fact is that when an error of law disfavors a large owner, it can have an even more profoundly negative effect on smaller creators.  This is a significant problem with the district court holding in Dr. Seuss Enterprises v. ComicMix LLC.  

In 2016 a group of creators, working under the name ComicMix copied Dr. Seuss’s iconic imagery from several classic works and combined these with themes and characters from Star Trek in order to produce a “mash-up” book called Oh, the Places You’ll Boldly Go!.  According to the creators’ testimony, the “Boldly” book was painstakingly designed to mimic Seuss—not only in illustration style, but composition, coloring, etc.—and a side-by-side comparison of the visual works shows that ComicMix “slavishly copied” nearly all of Seuss’s expressive elements in its pages.

Dr. Seuss Enterprises (DSE) sued ComicMix for copyright infringement, and the District Court for the Southern District Court of California held that “Boldly” is a fair use because it is “highly transformative.”  So, once again, this nettlesome doctrine is confusing courts as to the nature of derivative works.*  Because “Boldly” is not a work of commentary about — or parody of — the original, and is merely a different use of Seuss’s expressive elements, the district court erred by not recognizing it as a derivative work, which is the exclusive right of the copyright owner to produce.  Or not produce as he/she sees fit.  (See also, Stephen Carlisle posts here and here discussing this case.)

Fourth-Factor Fair Use Analysis is Troubling for Small Creators

Concurrent with this case being appealed to the Ninth Circuit, Copyright Alliance filed an amicus brief, which points to a specific error in the district court’s unfounded reasoning in its application of the fourth prong of the fair use test.  If the court’s rationale were to be upheld, it would be especially troubling to small, independent, and start-up creators. 

The fourth fair use factor considers the potential market harm to the rightsholder if the contested use were allowed; and that word potential is critical to this analysis because authors do not always know how, when, or why their protected work may be profitable in some new way.  Hence, the aforementioned exclusive right to prepare derivative works is a big part of that potential value, and exploiting that right is neither mandatory nor limited by a timeframe (other than the expiration of copyright itself).  Write a novel next year, and it is up to you to decide when—or if—you want to develop or approve a film adaptation.  The right to exploit your novel for a motion picture does not wane if you choose never to enter the film market or to enter that market many years after publication.

Consequently, when weighing potential market harm, one question the court is supposed to ask is whether the allegedly infringing work would be considered a derivative work under the exclusive rights granted by the copyright act.  If the answer to that question is yes, this weighs in favor of a finding that the contested use does present potential market harm.  And this is true regardless of a plaintiff’s ability to quantify the presumed value of that derivative market—especially if it implies a market she has not yet entered!    

So, because the district court erred in failing to recognize “Boldly” as a derivative work, it then exacerbated this problem by inventing what Copyright Alliance calls a “bright line standard” that does not exist in caselaw, whereby a plaintiff would be required to present evidence to prove the “substantial” market harm caused by the contested use. Now, forget about being a major player like Seuss for a moment and think about being the smallest Who on the dust-speck. 

Imagine being an indie comics author just beginning to get some recognition for your work on Instagram when you discover that some other party has started making merch or animated clips from your characters without license.  Then, when you sue to defend your work, the court says, Well, you weren’t in that market, so you can’t demonstrate how you could have sustained market harm. Or as the CA brief describes in its footnotes …

“One can readily imagine the first-time author whose only market data consists of modest profits from a first novel, with no existing licensing or sequel revenues, failing to show “substantial” harm after a playwright sells a script that co-opts the author’s central plot points and characters.”

This Catch-22 logic is the antithesis of the principle that fair use is meant to extend the purpose of copyright law. Instead, this court’s reasoning merely transfers the author’s derivative works right to another party for no reason other than the fact that the using party was the first to exploit a particular idea for a derivative.  By framing this ruling in those terms, it should be clear why a larger entity, which could expedite time-to-market, may be more likely to do harm to a smaller entity, or an individual, than the other way around.  

In addition to creating a burden of proof for the plaintiff that has no basis in the history of fourth-factor analysis, the district court in Seuss v. ComicMix went so far as to dismiss evidence that DSE had already pursued various derivative-works collaborations and is preparing to do more of same in the future.  So, even with a plaintiff who could come rather close to providing quantifiable evidence of potential market harm, this court still dismissed DSE’s claim in this regard as “merely hypothetical.”  

More specifically, as the Copyright Alliance brief describes, the court “penalized [DSE] for both non-entry into a market and successful entry into other, existing markets.”  In other words, ComicMix’s fair use defense was supported by the fact that DSE had not yet entered the specific mash-up “opportunity” ComicMix had exploited; BUT the defense was also strengthened by the fact that DSE had been successful with other derivatives in general.  

Presumably, the “logic” here seeks to define “potential market harm” as the extent to which an infringer may capture some fraction of the rightsholder’s market—as long as the rightsholder is already financially successful.  That is not the purpose of fair use; and upholding this reasoning could be devastating to the author with much shallower pockets than a DSE.  

Courts do not weigh fair use based on which owners have been “successful enough” to tolerate a particular infringement.  Among other problems, such reasoning literally penalizes success.  “This unfair double-standard would effectively force copyright owners who wish to protect their works to enter all markets while at the same time being careful not to be too successful in those markets,” states the Copyright Alliance brief.  That is an aberration of the purpose of copyright law and, therefore, the purpose of the fair use doctrine.  

* A brief written for this case by Professors Peter S. Menell, Shyamkrishna Blaganesh, and David Nimmer cites both Judge Leval, the author of the “transformative” doctrine, and Justice Souter’s opinion in the seminal Campbell case stating, “it is clear they did not intend for fair use to swallow a large portion of the right to prepare derivative works.”

Brammer Appeals Unsound Ruling in Otherwise Simple Copyright Case

In June, I wrote about the deeply flawed ruling in Brammer v. Violent Hues after the District Court for the Eastern District of Virginia handed down some rather inscrutable opinions about an otherwise straightforward copyright infringement case.  A production company company called Violent Hues used a photograph belonging to Russell Brammer on a website for the purpose of promoting a film festival.  The district court held that the use was a fair use predicated on errors of both fact and law, which are now enumerated in Brammer’s appeal to the Fourth Circuit, filed on October 22.  I suspect Brammer will prevail in this appeal, but I wanted to comment on one aspect of the response.

In the days before a now woefully unclear principle called “transformativeness” was introduced to the fair use doctrine (see discussion here), Brammer would have been a very simple case.  A photograph was copied and displayed for commercial purposes and used without a license.  The defendant would not have a leg to stand on, and the complaint would end in settlement. 

But as described in this recent post about Richard Prince’s unlicensed use of Donald Graham’s photograph to make “fine art,” various parties have sought to leverage the ambiguous nature of “transformativeness” in order to assert that it means little more than using a protected work in a context the original author had not exploited at the time of the infringing use.  I know that’s a mouthful, but such is the nature of twisted logic.  

In Brammer, the lower court held that Violent Hues had only made use of the informative aspect of Brammer’s photograph, displaying it in an informational context on a website, and so this was different from the photographer’s original, expressive purpose.  This line of reasoning is fraught with destructive implications; but one comment I made half-jokingly in my June post was that if, indeed, a court were able to identify two images (one expressive, one informative) in a single photograph, then Mr. Brammer ought to sue for infringement of his right to make derivative works.  

I say this was only half joking because, as Brammer’s appeal points out, one significant pitfall of an over-broad interpretation of “transformativeness” is that it can eliminate the author’s right to prepare derivative works as protected under copyright law §106(2).  In fact, the brief refers to a highly-controversial ruling by the Second Circuit which held that Richard Prince (yeah, him again) had made fair use of several photographs belonging to Patrick Cariou, stating “Cariou and its predecessors in the Second Circuit do not explain how every ‘transformative use’ can be ‘fair use’ without extinguishing the author’s rights under § 106(2).”   

So, I wasn’t really kidding.  Either the district court erred in holding that a photograph can be metaphysically split into identical twins with entirely separate identities, or Violent Hues infringed Brammer’s right to prepare his (expressive) work as a derivative (informative) work.  Spoiler:  the initial parsing of the image by the district court is preposterous as a matter of law, art, culture, and basic reason.   

The brief goes on to assert, “The Second Circuit heard the criticism [about the derivative works right] and received the message that its post-Campbell holdings went too far. In subsequent decisions, it dialed back what can qualify as transformative, holding that the Google Books and Cariou cases presented unique factual circumstances, and limited what can be viewed properly as a transformative justification.”

As addressed in other posts, the “transformativeness” doctrine is a squirrelly little bugger. It has caused splits among circuits and, as we see in Brammer, can result in a federal appeal where settlement should have been the natural outcome.  It seems likely that before long the Supreme Court will need to chisel this particular doctrine into some kind of coherent shape.  As such, rights holders should demand that its meaning remains tethered to the way in which it was first applied in Campbell v. Acuff-Rose in 1994.

To Review…

Assessing “transformativeness” is a consideration under the first fair use factor, which weighs the “nature and character of the use.”  It was first weighed in a manner entirely consistent with the spirit of fair use, which is to limit copyright’s protections so that they do not stifle otherwise unachievable new forms of expression.  Thus, a use which “transforms” by adding to or amending an original work in a way that creates a wholly new expression is well-suited to consideration for its amount of “transformativeness,” especially if the nature of the original work is intrinsic to the new expression.  

As first applied in Cambell, the Supreme Court held that a consideration of “transformativeness” favored the manner in which 2 Live Crew had used the song “Oh, Pretty Woman,” not solely because the raunchy rap version was new, but because there was an extent to which it parodied the spirit of the original, and this commentary was constituent to the nature of the new expression. 

Clearly, the considerations in Campbell are a far cry from a case like Brammer, where no new expression was created, but where the defendant simply used a whole work, as is, without permission (not that different from Prince v. Graham, really).  Still, the errors made by the district court in this otherwise simple case reveal the extent to which the “transformativeness” doctrine is in dire need of clarification.

As I said in the past, I think the word itself is problematic.  It is just too easy to shift perspective from considering how a use may “transform” a creative work to a consideration of how a use may have a “transformative” effect on an audience, or on society as a whole.  Both of these distinct perspectives have been present in fair use analyses, but arguably only the former truly examines expression itself, which is the purview of copyright law.  So, I expect Russell Brammer will prevail in this appeal, but we have not heard the last of these semantic adventures to the edge of reason aboard the “S.S. Transformative.”