Transformation of Transformative Use
Moderator: Julie Ahrens, Stanford Fair Use Project
Mass digitization: at the start of the litigation Google seemed bold, but after 8 years the result was less surprising, at least to some, since digitization is so valuable/expected. Perceptions about what ought to be easily accessible have evolved along with the law. Subtle but critical shift in fair use evaluations. It all started with Campbell.
Beyond parody: Dorling Kindersley is a very important case. Not required to discuss the artistic merits of the posters to use them on the timeline; the different purpose—use as historical artifacts—was sufficient when the initial use was artistic expression/concert promotion. Prince v. Cariou: artist need not have anything to say about the original art if the purpose is different. Message need not be tied specifically to the original work/analyze the original work. With remand on 5 works, Prince left some uncertainties about how much change is enough.
Joseph Gratz, Durie Tangri LLP
The Campbell mold has never been unique—something much older, can’t be stuffed into one word. The use in question is productive: results in the creation of something new that goes beyond purposes/value of original, and doesn’t supersede the original. Transformative is just shorthand for non-superseding productive use. Goes back to Folsom v. Marsh. It’s been a good run since Campbell, but maybe the word transformative should be retired and talk about what we really mean, since different uses might not fit in the same bucket even though they are all nonsuperseding and productive—Pam Samuelson’s categorization attempts to group them.
Four different buckets he’ll discuss: (1) Easily articulable comment on original, incorporated into new creative work. Campbell, Wind Done Gone. Not all are “parodies,” but there is comment. That’s easy and everyone calls it transformative. Harder cases when incorporated into new creative work where commentary is harder to articulate—Cariou, Blanch v. Koons—commentary on society. We could say the original is used as a touchstone/icon. Though Cariou photos were probably not iconic. (Blanch is not iconicity; it’s representativeness/standardness, which also deserves to be available; you’ve got to be able to pick an example.) Cat in the Hat came out wrong under this standard.
(2) Verbatim copying for the purpose of criticism—not a new song/painting/book, but just to criticize. Rarely been of the expressive value of the original, but instead of the original or even of the author. Maxtone-Graham: abortion-related book. Criticism of Scientology. Criticism of the message of the song “Imagine,” not the melody/chord structure/etc. That’s transforming the work as a tool/object of criticism, but transformativeness is distracting: use for purpose of criticism, where license is unlikely.
(3) Noncritical copying to prove a point: using the work as evidence. Dorling Kindersley. The work isn’t being commented on in itself, but the work is necessary to make a point about the world. Zapruder film case fits into this category: raw material in order to make an argument that couldn’t be made without that expression. Different use than original. (Why isn’t Blanch v. Koons here?) These are three distinct categories.
(4) Technological uses. Google Books, iParadigms (plagiarism detection). They aren’t the creation of new creative works, and they don’t involve criticism/commentary. What do they have in common? Productive: result in creation of new thing that didn’t exist and couldn’t exist without the original, and they aren’t substitutes. You don’t and can’t go to these new tools instead of experiencing the original in full form. Does the value of that plagiarism tool stem from the expressive value of the inputs? No, its value doesn’t flow from or replace the creative value of the original. That’s how Google Books, Perfect 10, HathiTrust fit into fair use/favored under the first factor. It’s a big umbrella, but transformativeness may obscure more than it makes clear.
Liz McNamara, Davis Wright Tremaine LLP
Not her position that a significant number of cases have gone wrong on fair use (speaking for herself). Courts have generally done the case by case analysis properly. What concerns her is the rhetoric and the way transformativeness is discussed, unhinged from Campbell—that happened in Google Books.
Where the law was before Google: pendulum swing! Too often, content owners are accused of living in a time warp. But content owners are the foremost users of fair use. (Equivocation in the definition here, but ok.) In the 1990s, the swing was in favor of too much protection—Harper & Row v. Nation led into Salinger/New Era that made fair use of unpublished works almost impossible, which was what led to Leval’s article and subsequent amendment of © Act. Overemphasis on whether secondary use was commercial—Sony’s statement that every commercial use is presumptively unfair. The 6th Circuit in Campbell relied on this, which was the cause of such concern. Content owners breathed a sigh of relief after Campbell.
Rhetoric has become more shrill/out of the box on what’s transformative, with little regard for content owners—“free on the internet is free to use.” (I’m not sure which advocates say that.) Kelly v. Arriba Soft—not necessarily wrong. But the facts are important: thumbnails were small/poor resolution and could not serve as substitute for aesthetics of full image. Court also assumed, w/o evidence, that search engine actually acted as pointer/drove users to websites where you could get the full image to the benefit of the © owner. Substitution remains a critical component of transformative use, not just in the 4th factor. 9th Circuit in Kelly took pains to contrast facts before it, where it found substitution impossible, with Infinity Broadcasting, where it was possible to use original broadcast for entertainment purpose.
Judge Chin/Google Books: what’s at issue is not what’s being served up in the search results, but the fact that Google digitized 20 million books without permission. They didn’t say please or thank you; they just took it. A volume discount on fair use? Judge Chin failed to take into account monetization of data Google collects/Google’s data mining. (I thought she was cool with commercial fair uses?) Improperly considered the project educational, looking at ultimate user rather than Google, when law dictates that Google’s use controls rather than ultimate user’s under Texaco. When uses are systematic and no new expression emerges, we should apply a new and heightened standard, considering not just that the new use is useful, as Infinity said—change in format/enhancing convenience is not transformative. Instead should ask whether it is capable of substituting for the original. Kelly wrongly assumed that search engine acted as a pointer; AP v. Meltwater: we now understand how often clicks do/don’t happen. News service was really being read as substitute. Including links wasn’t a pointer.
Also, are profits being diverted from original publishers? Rosetta Books established that electronic rights are separate for authors. Authors are entitled to license them. Totally removed from the analysis. Serious loss of revenue—Google strives to keep users on its platform, and 20 million books is an important monetary incentive to stay. (… If you got to read the whole book, sure.)
Also need to look at whether this is one-off taking or systematic taking of massive quantities of data.
She isn’t that optimistic about the 2nd Circuit decision in favor of Authors Guild, but does hope that the court carefully circumscribes its rulings so as not to create unanticipated/significant negative consequences for creators.
Kozinski said that if you want to win in the 9th Circuit you have to say that to go against you would be the demise of Google. That’s where we are.
Gratz: He’s since said that he’s not worried about Google.
McNamara: reminder about Infinity: media dial-up subscription services, allowing subscribers to listen to radio broadcasts around the US. Marketed for the purpose of auditioning talent, verifying that ads were played, etc. Evidence showed that users could listen to snippets or entire broadcast. 2d Circuit found infringement. D had argued that its broadcasts were used informationally, not for entertainment—different purpose. Court rejected that argument: a difference in purpose is not quite the same thing as transformation. Retransmissions left the character of the broadcast unchanged, without new meaning or message. Listener could use for entertainment purposes. (Interesting switch to the effect on the user, which McNamara said wasn’t legit when Google does it. Also doubtful that many users piece together a few hundred words at a time for original entertainment purposes of the books.) Societal benefit wasn’t enough to be fair use, citing Texaco. Not enough of a benefit to outweigh the taking. Google Books will have to deal with this language.
Ahrens: one thing that seems missing from Infinity that is in more recent cases seems to be the idea of nonsubstitutionary use.
Gratz: we don’t disagree to the extent someone is using the service just to listen to songs, because the songs make them happy—that’s a substitution. One thing that’s changed in the 2nd Circuit is how one looks at who the primary/direct infringer is, and who we’re running the fair use analysis on. We didn’t have the volitional conduct rule in 1998. Who’s the direct infringer in Infinity? The facts in Infinity could have turned out differently if D was just operating a system that didn’t do anything until someone logged in and tuned their own little radio to play to them. Is that fair use? Maybe/maybe not, but then D would be secondarily liable. If there are legit uses for ad verification, etc., that would be a fair use. Have to drill down into what the person choosing to activate a technological system is doing. That’s not actually a matter of changed fair use doctrine.
McNamara: D wasn’t paying anyone who created the content from which it reaped a benefit. Also, Texaco refutes the notion that the end user matters rather than the commercial actor appropriating the content. News reporting mission doesn’t let news organizations line their shelves with photocopies of books on journalism. Equally extravagant to claim that Google Books can line its shelves with 20 million copies of books. (But in this analogy, the “journalists” can’t take the whole book off of Google’s “shelf,” even if their activities bring indirect profit to Google. Now we’re back to the snippets.)
Ahrens: but what kind of substitution are we talking about? The original or a derivative market that the copyright owner would just really really like to license?
McNamara: substitution comes in many ways. There can be outright substitution, with news aggregation. Sliding scale. There can be substitution if copying usurps a separate existing market that people pay for.
Gratz: Those are fourth-factor considerations, and don’t go into Q of where the value comes from—expression in the original or what the secondary user added.
Texaco: not employed as part of a larger whole for some new purpose. Verbatim copying is always the case—it’s necessary to the process of creating transformative works. Scientist wanted to make hardier copy/copy that he could write and spill stuff on; court said that might well be transformative if that was all you were doing. But it wasn’t shown that he was doing that. He was reading it to understand its intellectual content. Assess the means by which the value of the second use is generated—if the means is the same, copying expression to enjoy expression, then that’s not transformative.
Would this be the same today? Yes, even after the Second Circuit (hopefully) affirms in HathiTrust and Authors Guild cases. Just making a reading copy is not by itself transformative, though that same act may also be necessary for a different and transformative purpose/act later. Public benefit isn’t enough—and that doesn’t even come into transformativeness, though it’s worth weighing in fair use overall. Totally useless changes can be transformative. Letting us read 20 million books in their entirety would have a great public benefit, but that wouldn’t make it fair. Creating something that doesn’t exist before, and that can’t substitute for the original, is different.
McNamara: seat licenses for electronic newsletters—the market has evolved in a way that addresses the Texaco issue. (And strangles our libraries, but never mind.)
Q: how do you square Cariou with the definition of a derivative work?
Gratz: “transforms, recasts, adapts,” and he doesn’t disagree that the best word for what was going on may have been recasting rather than transforming in the sense of a parody. Where it departs from what would talk about as a derivative work, is the way the word transformative is used in fair use: fodder or raw material in a way that separates it not for its expression but as a touchstone/icon. Transformation is not physical (or not only physical) but in purpose, and that means something different. But that’s one reason we should stop using the term in fair use.
Ahrens: some markets are not reserved to the copyright owner, like criticism or commentary. Maintaining that distinction helps preserve free speech.
Q: but it does interfere with derivative rights. Looking at third party audience’s reaction isn’t helpful to the artist figuring out whether they need a license. Yes Rasta photos weren’t iconic. Rather than take his own pictures, he took what was convenient. There are easily licensable materials.
Ahrens: necessary isn’t the standard; reasonability in light of the purpose is the standard. Nothing is necessary. 2 Live Crew didn’t have to comment on Pretty Woman.
Q: but no one would ever permit parody. But a visual reference isn’t parody, and is available for licensing. (I wrote an article with Bruce Keller about why this is wrong.)
Ahrens: but he wasn’t picking from pictures of Rastafarians. He was inspired by that specific book.
Q: McNamara sounds like grafting unfair competition law onto fair use. Why is making money relevant without a theory of unfair competition (which would be preempted)?
McNamara: there is an existing market for digitizing works. Copyright Alliance amicus brief: needs to be decided with stakeholders at the table, not unilaterally by Google which drives everyone else out of the market—no one else can engage in this level of mass digitization; even Microsoft backed off. There is a derivative right at issue. (RT: No, there’s a reproduction right. This argument about Google’s uniqueness seems a bit in tension with the immediately previous claim that there’s an existing market.)
Gratz: those are fourth factor issues, and asking permission doesn’t matter to fair use.
Q: DJ culture as new business model. Where does that fit in transformativeness?
Ahrens: mashups can be new/not substitutive. W/music in particular, and sampling law, it’s complicated. The licensing model matters. If sampling cases had begun to be decided now, and not in 1992, that might’ve changed the entire landscape. But it’s not a new business model, but how the genre developed. There are arguments about how this has harmed the art form; the only people who sample are showing off how much money they have and new entrants are limited in their expression.