Intellectual Property

The Tyranny Of Fair Use (Part II): One Person's Outsized Impact On Copyright Law

Fair use in copyright wasn't always so 'transformative' until this law review article was published.

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In 1990, let’s imagine, a Southern District of New York judge named Pierre N. Leval sat at his writing table, pen in hand, staring at an ominous blank page. He was engrossed in the drafting of a law review paper, one for which he had an idea, a revolutionary idea, but one that was precluded by the text of a federal statute. So he had an idea, and he had a problem.

That problem lay in the text of the Copyright Act, which reserves to the author of an original work the exclusive right to create derivative works therefrom. This right is enshrined at 17 USC 106(2) and has barely been challenged over the decades. Judge Leval’s idea would present to it a direct attack.

It would also contravene over 150 years of jurisprudence and strive to extend a settled doctrine to strange and previously unseen dimensions. Section 101 of the Act was the crux of the matter, as it described derivative works as works “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.”

It is very important for our purposes that “transformed” appears in this Section because it makes clear that an author has the exclusive right to transform their work to create new works. Yet Judge Leval steamed right past the text of the statute, arguing in his paper that if a derivative work is “transformed” from the original then there is no need for the transformer to meet the eye, or gain the consent, of the original’s author. And he argued that the “character and purpose” prong of Section 107, the “fair use” statute, which does not include any reference to “transformation,” should function to protect unauthorized works that, among other things, “employ the quoted matter in a different manner or for a different purpose from the original.”

This “different manner” language is of a low clarity and it is hard to glean how Judge Leval’s “transforming” a work for purposes of “fair use” (which he argued was a defense to infringement) was different from transforming a work for purposes of creating a derivative work (which violates an author’s rights under the Copyright Act). But Judge Leval was persistent and also very smart. His Harvard Law Review article, Toward a Fair Use Standard, finessed this glaring and fundamental flaw and forever changed the state of author’s rights.

At the time this article was published, nowhere in the extant case law did the phrase “transformative” appear in connection with a “fair use” review. Perhaps because it is so amorphous and overbroad as to be more hindrance than help. The widely adopted test at the time focused on the less nebulous test of whether the supposedly “fair use” would harm the original author’s market for his work. But, in introducing the “transformative” test, Judge Leval shifted the conversation all the way outside of the traditional “fair use” factors identified in Section 107 of the Copyright Act and ran smack into the prohibition against transformation in Section 106.

Despite the statutory shortcomings, the paper’s effects were immediate as these things go. It was published in 1990, Judge Leval was elevated to the Second Circuit in 1993, and in 1994, the Supreme Court, in Campbell v. Acuff–Rose Music, Inc., a case addressing a “Pretty Woman” parody song, noted the “transformative” nature of the disputed work and cited numerous times to Judge Leval’s paper.

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Back at the Second Circuit, Judge Leval pressed his “fair use” theory with alacrity and vigor. To spin the old Justice Potter Stewart quote, Judge Leval knew a “fair use” when he saw one, and he saw one just about everywhere he looked.

How quickly and radically the Second Circuit’s position on “fair use” shifted can be seen by comparing two fine art cases separated by a mere 20 years. In 1992, in Rogers v. Koons, the Second Circuit rejected a “fair use” defense of a Jeff Koons puppy sculpture that was a faithful copy of a photographer’s original work, albeit a copy that was rendered as a sculpture as opposed to a photograph. The Circuit noted that the “crucial” inquiry was whether Koons intended to profit from his sculptures without paying the photographer on whose work the sculptures were based. This factor, they noted, citing to the Supreme Court case of Stewart v. Abend, was the most important “fair use” factor. And Koons’s intent to profit from the sculptures defeated his “fair use” defense. This result logically followed from the text of the Copyright Act and over a hundred years of precedent.

In 2013, a split Second Circuit panel issued the oft-criticized decision in the case of Cariou v. Prince. There is no need to rehash this tragic decision, other than to say that the bard of copyright law himself, Professor David Nimmer, wrote that the case represented an out-of-whack approach to “fair use” and that “a correction” was necessary. Citing no less than six times to their colleague Judge Leval’s almost quarter-century-old law review paper, the Second Circuit emphasized the “transformative” factor of the “fair use” analysis to find that Richard Prince’s addition of ink blots to a photographer’s work rendered the use “fair” and deprived the photographer of his exclusive Section 106 right to create derivative works. In just 20 years, the Second Circuit’s “fair use” analysis had shifted almost entirely away from the “fair use” factors set forth in the Copyright Act and pre-1990s caselaw, and untethered from common sense.

The criticism did little to dissuade Judge Leval. A couple of years later, in the woefully decided Authors Guild v. Google case, he, relying on the heavily criticized Cariou analysis, which was in turn, reliant on his law review article, doubled down on his belief that the “commercial” nature of the allegedly “fair use” was only marginally relevant and that his “transformative” factor should carry the day.

He ruled in this case that Google was engaging in “fair use” when it scanned and published big chunks of books without their authors’ consent. The authors, of course, were aghast at this and objected but Judge Leval waived away their concerns and celebrated the “transformative” nature of a tech company scanning and publishing books. We had certainly come a long way from a “fair use” being one which did not harm the author’s market and to which the authors would not reasonably object.

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Judge Leval’s creation, elevation, and entrenchment of a “fair use” factor that did not appear in the statute or caselaw and ran afoul of one of the author’s limited exclusive statutory rights has not gone unnoticed. Judge Eastbrook of the Seventh Circuit has been especially incisive in this regard. We will look at his critique, and the contemporary reverberations of Judge Leval’s transformation of “fair use” jurisprudence, in next week’s column.

Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at scott@copyrightLA.com, and you can follow his law firm on Instagram: @veniceartlaw.

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