Monday, August 12, 2013

Changed meaning is fair use, but can't justify fee award

Seltzer v. Green Day, Inc., No. 11-56573 (9th Cir. Aug. 7, 2013)

The court of appeals affirmed a fair use finding by the district court over the use of an illustration in the video backdrop of Green Day’s stage show, but reversed the award of attorneys’ fees to Green Day.  Derek Seltzer created Scream Icon, a drawing of a screaming, contorted face, in 2003:

He made copies, including large posters and smaller prints with adhesive backs, which he sold and gave away.  Many posters were plastered on walls as street art in LA and elsewhere.  Seltzer at times used Scream Icon to identify himself or his work in ads for his gallery appearances, and he licensed it for use in a music video.

Defendant Roger Staub, a photographer and professional set-lighting and video designer, photographed a brick wall at the corner of Sunset Boulevard and Gardner Avenue in LA in 2008. It was covered in graffiti and posters, including a “weathered and torn” copy of Scream Icon:

Staub created the video backdrops for Green Day’s tour in support of its 2009 album.  Each of the 32 songs on the set list got its own video backdrop, which Staub created after repeatedly listening to the new album and studied the album art, which used graffiti and street art as significant visual elements.  For the eighth song on the album, East Jesus Nowhere, Staub created a backdrop with the goal of conveying the song’s “mood, tone or themes”; he saw the theme as “the hypocrisy of some religious people who preach one thing but act otherwise. . . . The song is about the violence that is done in the name of religion.”  The resulting video was approximately four minutes long.  It depicted a brick alleyway covered in graffiti:

[S]everal days pass at an accelerated pace and graffiti artists come and go, adding new art, posters, and tags to the brick alleyway. The graffiti includes at least three images of Jesus Christ, which are defaced over the course of the video. Throughout the video, the center of the frame is dominated by an unchanging, but modified, Scream Icon.

Staub used his photo, cut out the image of Scream Icon, and modified it by adding a large red “spray-painted” cross over the middle of the screaming face. “He also changed the contrast and color and added black streaks running down the right side of the face. Staub’s image further differs from Scream Icon because Staub’s original photograph was of a weathered, slightly defaced, and torn poster.”  Still, the work was nonetheless clearly identifiable in the middle of the screen throughout the video.

This video was played behind Green Day during the performance of East Jesus Nowhere at about 70 concerts and also during Green Day’s performance of the song at the MTV Video Music Awards.  Afterwards, Seltzer registered his copyright in Scream Icon; Green Day stopped using the video backdrop, and Seltzer sued.  After the district court granted Green Day summary judgment on the copyright, Lanham Act, and related state law claims, it awarded Green Day over $200,000 in attorneys’ fees on the theory that Seltzer’s claims were objectively unreasonable.

Fair use is a mixed question of law and fact, reviewed de novo.  “Where no material, historical facts are at issue and the parties dispute only the ultimate conclusions to be drawn from those facts, we may draw those conclusions without usurping the function of the jury.”

Transformativeness is often hotly contested.  The court here drew on Judge Leval’s 1990 article defining transformative use as a use that is productive and employs the “quoted matter” in a different manner or for a different purpose than the original.  “[I]f the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings … this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”

Under this standard, Green Day’s use was transformative. Scream Icon was “raw material” in the construction of the four-minute video backdrop.  It wasn’t simply quotation or republication.  Though Scream Icon was prominent, it was “only a component of what is essentially a street-art focused music video about religion and especially about Christianity.”  By contrast, the message and meaning of the original work was debatable.  To the court of appeals, “it appears to be a directionless anguished screaming face.” Seltzer testified: “It addresses themes of youth culture, skateboard culture, insider/outsider culture, . . . it’s an iconic reference to a culture and time in Los Angeles when the image was made.” The court of appeals noted that, “regardless of the meaning of the original, it clearly says nothing about religion.”  With the cross added on top, “in the context of a song about the hypocrisy of religion, surrounded by religious iconography, Staub’s video backdrop using Scream Icon conveys ‘new information, new aesthetics, new insights and understandings’ that are plainly distinct from those of the original piece.”  Seltzer acknowledged this in his deposition, when he said that the backdrop “tainted the original message of the image and [] made it now synonymous with lyrics, a video, and concert tour that it was not originally intended to be used with.”

(Note: this language fits with my general argument that the juxtaposition of music and images each change the way the other is perceived, as I presented on at IPSC.  And it is good support for the fair use arguments of vidders, who use music and images that weren’t intended to go together to achieve precisely this transformation.  The Ninth Circuit is clearly following the lead of Prince v. Cariou in separating transformativeness from a requirement of critique, as long as the new work has new meaning and independent expressive value.)

The case law is splintered, but the court here deemed its conclusion “in line” with other appellate authority.  Publishing photos of a secret wedding, by contrast, weren’t transformative because they didn’t alter the first work with new expression, meaning, or message, and using clips of Elvis’s TV appearances also wasn’t transformative when the clips were played without much interruption and served the same intrinsic entertainment value (Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 629 (9th Cir. 2003)).  The court also distinguished L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924 (9th Cir. 2002), as involving only “plucking the most visually arresting excerpt” from riot footage, and Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70 (2d Cir. 1997), which possibly might have seemed like Seltzer’s best bet, since that involved use of a poster as a decoration on a TV show; again, the poster was used for “precisely a central purpose for which it was created” and defendants hadn’t added anything new (except the surrounding show). 

This case was more like other cases finding transformativeness “as long as new expressive content or message is apparent,” even where “the allegedly infringing work makes few physical changes to the original or fails to comment on the original.”  (Citing Cariou; Dorling Kindersley; Blanch v. Koons; Kelly v. Arriba Soft; and the other L.A. News Service holding that a montage was transformative.) There seems to be an underlying concept of integration: conceptually, the Scream Icon was integrated into, and thus transformed by, the rest of the work.  It’s hard to see a bright line between this type of integration and, say, the news reporting/documentary-lite in L.A. News Service and Elvis Presley, but that’s not a new problem, as reflected by the fact that both of those plaintiffs have also lost cases when defendants’ treatment of clips was different/added new meaning in the courts’ view.

Transformativeness plus the fact that the commercial nature of the use was limited favored Green Day: it was incidental use as part of a commercial enterprise, not exploitation of the copyright for commercial gain: the image was never used to market the concert, CDs, or merchandise.

Nature of the work: Scream Icon was creative, meriting “strong” protection, but it had already been published and widely distributed, making it more likely to qualify as fair use.  Seltzer was able to control the first public appearance of his work, which weighed in Green Day’s favor, making the overall factor weigh only slightly in Seltzer’s favor.

Factor three: Green Day copied most of Scream Icon, quantitatively and qualitatively, but the image wasn’t meaningfully divisible. In such cases, this factor doesn’t weigh against an alleged infringer, even one who copies the whole work, if it takes no more than necessary for an intended use.  This factor interacts with factor one, and here the use of the entire work was necessary to achieve Green Day’s new expression, meaning, or message.

Factor four: when a use doesn’t substitute for the original and serves a different market function, that weighs in favor of fair use.  Seltzer repeatedly testified at his deposition that the value of his work was unchanged, but that he just didn’t like Green Day’s use.  Rather than arguing that he’d lost sales, he claimed that Scream Icon was “tarnished” for him personally.  Green Day presented evidence that its video backdrop had a different market function than the original, which was primarily intended as street art.  Green Day’s use was “never placed on merchandise, albums, or promotional material and was used for only one song in the middle of a three hour touring show.”  There was no reasonable argument that this type of conduct substituted for Seltzer’s primary market.

How about traditional, reasonable, or likely to be developed markets?  Seltzer declared that Scream Icon was licensed in a music video by a band named “People.”  But he didn’t explain how much revenue he earned, how the band used the music video, or how the music video used Scream Icon. Without more, this fact didn’t show that Green Day harmed any existing or likely-to-be-developed market.  This factor weighed in Green Day’s favor.  Overall, it was a fair use.

The court of appeals turned to the Lanham Act claims.  The district court concluded that Seltzer failed to show that he used the image as a mark in the sale of goods or services.  He argued that he put Scream Icon on certain ads for his appearance at an art gallery show, but that wasn’t enough evidence that the use of the mark was “sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind.” He didn’t show how the ads were distributed, who might’ve seen them, when they were distributed, to what shows they were connected, or any other facts that might be necessary to evaluate trademark protection.  Summary judgment was proper.  This doomed the state law claims as well.

Seltzer did get off the hook for Green Day’s attorneys’ fees.  When a defendant wins a fair use case, the key question is whether the successful defense furthered the purpose of the Copyright Act, but the loser doesn’t always have to pay.  The district court found Seltzer’s claim objectively unreasonable, given that Seltzer lost on summary judgment because three of the four fair use factors favored Green Day, and that his deposition testimony effectively conceded transformative use because he claimed that the new use “tainted the original message” and “devalue[d] the original intent” of Scream Icon.
But the “mere fact” that he lost didn’t show objective unreasonability, and Green Day only won on two of the four factors (the two the court had just declared the most important, sigh) and a third was neutral.  And his deposition statement only expressed his opinion and couldn’t concede transformativeness, since how the reasonable observer sees the work is critical and not what the artist says.  (Citing Cariou, which is relevant to Eva Subotnik’s paper from IPSC, I think.)  Thus, the district court abused its discretion in concluding that Seltzer’s case was objectively unreasonable when he brought it; the case was “close and difficult.”  The transformation “was far from obvious given Green Day’s only slight alterations to the original.”  There was no reason to believe that Seltzer should’ve known from the outset that his chances of success were slim to none, and so the court of appeals vacated the award.


  1. Useful case and good summary. Fair use assertions are growing easier as the accumulated body of such cases increase, and classes or clusters of types of uses begin to emerge organically.

    Unfortunately, this also highlights the most obstinate problem: the cost of winning a fair use defense puts it out of reach of most users. As Lessig said, Fair use is still a license to hire a lawyer.

    Despite being case-specific, fair use needs some well-articulated clusters of use types that are held to be usually fair. So far, we have thumbnail images on the Internet (and by extension in print); we have a still from a motion picture (de minimis use); we have an image glimpsed for seconds in the background of a film; and we have short quotes of text (but not poetry).

    Unless courts begin to recognize the concept of "usually fair" types of use, the doctrine remains a last resort.

  2. Anonymous9:24 AM

    You asked about other countries - I just wrote a Canadian perspective on the Green Day case - hope its helpful - here is the link:

    My reaction was that while the fair use test is given lip service, the real defence is transformation, into essentially a new different work despite the copying.
    It's helpful to users of works not yet in the public domain thanks to GD's deep pockets for their legal defence. The labels are probably not happy with the outcome.

  3. I think you are right in saying that in this case "The Ninth Circuit is clearly following the lead of Prince v. Cariou in separating transformativeness from a requirement of critique, as long as the new work has new meaning and independent expressive value" but it is interesting given that other Ninth Circuit cases have gone the other way, including the case cited above about the wedding photographs, and the Dr. Suess case authored by the sithor of this Green Day opinion.