Artists, Not Judges, Should Decide Fair Use: Select Implications of the Cariou-Sconnie Nation Deviation

April 2, 2015

by Sekou Campbell, Esq.

This piece will focus on two implications of the Cariou and Sconnie Nation analyses: (1) the inherently factual nature of “fair use” analysis and (2) fair use as an affirmative defense. “Fair use” started as a judge-made remedy to technically correct legal conclusions that led to absurd results, a practice commonly known as “equity.” Generally, and in the case of “fair use,” equity requires a court to make a significant factual investigation so as to demonstrate why the technical law should not apply. “Fair use,” however, is odd because despite its equity origins, it has been codified as a technical law for the last forty years in the U.S. Copyright Act. Moreover, “fair use” can only be found if (a) a defendant has been found to infringe a plaintiff’s copyright, and (b) a defendant proves that “fair use” should be applied. Although the burden of proof is traditionally on a plaintiff, “fair use” is an affirmative defense, meaning the defendant must prove each element. Courts frequently delve into their analyses without acknowledging the significance of the fact that they are making equitable, not technical, decisions that the defendant, not the plaintiff-creator, must fully prove. Sconnie Nation serves as a good reminder of the pitfalls to treating equity like a technical law and ignoring that the defendant bears the burden to prove “fair use.”

Over the last two decades, a single doctrine has garnered much of the attention of “fair use” case law: “transformativeness.” “Transformativeness,” first introduced by Southern District of New York District Judge Pierre N. Leval, suggests that when a subsequent user “adds value” to an original piece of artwork by using that original as “raw material,” rather than “repackaging” or “republishing” the original, that subsequent use deserves protection under the “fair use” statute.^[1] As more and more artists “quote” other artists and artwork, “transformativeness” has become more and more central to the “fair use” decisional law. Indeed, it can be argued that Cariou, the 2013 Second Circuit decision, held that transformativeness is a dispositive “fair use” factor.

The case law generally ignores the equity origins of “fair use” and by necessary implication “transformativeness,” and jumps right into a “legal analysis” by comparing the plaintiff-creator’s work to the defendant-second user’s work. Focusing the analysis on which facts best show “fair use” by relying on art experts and fact testimony and documents from artists rather than other judges will result in two favorable outcomes: (1) fewer judges acting like art critics and (2) more private negotiations between artists about the use of each other’s work.

It seems that thee Seventh Circuit’s criticism of Cariou, in Sconnie Nation, highlights the shortcomings of relying too heavily on works that are technically “transformative” in order to conclude that a defendant has proven “fair use.” Specifically, Judge Easterbrook reasoned that “transformativeness” is actually codified as a protected right in 17 U.S.C. § 106(2), the statute that establishes what uses constitute “copyright infringement.” That statute protects “derivative works,” which is defined to include a “transformed work.” Therefore, as Sconnie Nation points out, an expanding “transformative use” doctrine threatens to extinguish the derivative work right. But, as will be discussed below, a more nuanced and fact-intensive inquiry can save both the transformativeness doctrine and the derivative work statute.

Tale of Two Circuits: 2nd and 7th

Cariou and Sconnie Nation both purportedly involved “appropriation art,” whereby the defendant-second users copied or otherwise used the plaintiff-creator’s copyrightable artwork as “raw material.”^[2] In Cariou, the “raw material” came from Patrick Cariou, a professional photographer who lived in Jamaica for six years. During that time, Mr. Cariou developed a relationship with Rastafarians that allowed him to take “extreme classical” and not “pop culture” photographs. In Sconnie Nation, Michael Kienitz photographed Madison, Wisconsin mayor Paul Soglin during his inauguration. In both cases, the defendant-second users (Richard Prince in Cariou and Sconnie Nation in Sconnie Nation) modified the original, taking elements away and adding others to them. Thus, both defendants admitted to “appropriating” or infringing upon their adversary’s work. Both parties also asserted “fair use” defenses by incorporating a “transformativeness” argument.

Cariou

Cariou represents a tension between the “reasonable observer” test, on the one hand, and the oft-quoted dictum that “it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work],” on the other.^[3] The “reasonable observer” test requires the Court to “examine how the artworks may ‘reasonably be perceived’ in order to assess their transformative nature.”^[4] Without a fully developed factual record, however, judges serve as rather inept observers because they generally do not “assess transformativeness from multiple perspectives, with attention to what different audiences might see in a work and in an allegedly transformative remix of that work.”^[5] The dissent in Cariou takes a similar position.^[6] Thus, to resolve the tension between the “reasonable observer” test and the judge-as-art-critic problem, appellate courts, like the Cariou dissent, should defer more to lower courts, pushing litigants to trial and not merely dispositive motion practice.

This adjustment will lead to two developments. First, the higher courts will have more facts on appeal. Specifically, they will have experts’ testimony, actual professional art critics, upon which to base their opinion. Second, more settlements will occur, encouraging artists to resolve these disputes on their own. In either case, an artist or art professional gets a much more prominent voice in decisions affecting artwork, a welcomed development.

Sconnie Nation

Judge Easterbrook points out that “[f]air use is a statutory defense to infringement.”^[7] This is almost correct.^[8] It highlights, without saying it, the fact that a defendant has the burden to prove fair use. Judge Easterbrook stated that transformativeness cannot be a significant factor when considering a “derivative work” protected by 17 U.S.C. §106(2). This statement, taken together with the fact that fair use is an affirmative defense, suggests that “transformativeness” cannot do much work in a fair use analysis because a “transformed work” is defined as a “derivative work” in the Copyright Act.^[9] Therefore, if a plaintiff argues that its derivative work copyright has been violated, it may also be conceding fair use, rendering 17 U.S.C. § 106(2) useless. Sconnie Nation solves this problem by largely ignoring the “transformativeness” analysis. However, another solution exists; require the defendant to distinguish between an infringing transformation (e.g. translation or summary) and fair transformation (e.g. parody and satire).

Of course, such a distinction requires a court, preferably the U.S. Supreme Court, to provide a principled rule of law. However, this could also be a factual inquiry, governed by some basic principles that mirror current copyright law, like a modicum of creativity and originality, an effect on the commercial market of the plaintiff-creator and the amount and substantiality of the transformation (e.g. is the change subtle or bold). Ultimately, when courts require defendants to prove more, they may also help artists to fashion more developed arguments that lead to better rules that guide the fact finders below.

Conclusion

Judge Easterbrook seems to have done a good job stoking the flames of controversy over fair use and hopefully triggering Supreme Court analysis in Sconnie Nation. This piece hopefully highlights some additional considerations that will make the doctrine more clear.

Select Sources:

• Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014).
• Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013).
• Rebecca Tushnet, 7th Circuit doesn’t like transformativeness or factor 1, still finds fair use (available at http://tushnet.blogspot.com/2014/09/7th-circuit-doesnt-like.html) (last visited Mar. 30, 2015).
• Meng Zhong, A Circuit Split or Just a Surface Blemish: Why Keinitz v. Sconnie Nation LLC Doesn’t Conflict with Cariou v. Prince (available at http://www.natlawreview.com/article/circuit-split-or-just-surface-blemish-why-kienitz-v-sconnie-nation-llc-doesn-t-confl).
• Rebecca Tushnet, Judges as Bad Reviewers: Fair Use and Epistemological Humility, 25 Law & Lit. 20, 29 (2013).
• Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990).
• Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79 (1994); Leibovitz v. Paramount Pictures Corp., 13 F.3d 109, 113-14 (2d Cir. 1998)

About the Author: Sekou Campbell is an attorney in private practice in Philadelphia, Pennsylvania, where he litigates commercial matters in state and federal courts throughout the country.

1. The Cariou Court adopted the Tate Gallery’s definition of appropriation art as “the more or less direct taking over into a work of art a real object or even an existing work of art.” Cariou, 714 F.3d at 699.
2. Cariou, 714 F.3d at 714 (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)).
3. Cariou, 714 F.3d at 714 (“because the district court takes the primary role in determining the facts and applying the law to the facts in fair use cases, after which we exercise our appellate review if called upon to do so, I conclude that as to each painting, the district court is best situated to determine, in the first instance, ‘whether Prince is entitled to a fair use defense in light of the correct legal standard.’”).
4. Sconnie Nation, 766 F.3d at 758.
5. Fair use is derived from equity and merely codified in the 1976 Copyright Act. See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 448 (1984).
6. 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. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work.’
7. 17 U.S.C. § 101.