Panel III. Ethical and Strategic Issues in Fair Use Litigation (Moderator, Professor Naeve)
Naeve: discuss ethics of parody, disparagement, use in pornographic work. Should you ask permission?
Lydia Loren, Lewis & Clark: for all its positive effects, she dislike Campbell’s characterization of fair use as an affirmative defense. A defense is any reason D might prevail: work is in public domain; P isn’t the owner; I didn’t copy. These may be pled as defenses, but an affirmative defense is a “yes but.” I infringed, but it’s ok. That really solidified in Campbell: only address fair use after the prima facie case has been met, putting burden on D. But why?
D counsel conceded it was an affirmative defense at oral argument in Campbell. Campbell cites Harper & Row, which calls it a defense many times but an affirmative defense only once. We teach it as affirmative defense, but it falls apart as such. The statutory language does not support the characterization: §107 says fair use is “not an infringement.” §106 says the rights are subject to §§107-110; §501 says violations in the statute as provided §§106-122. Legislative history (cited by Harper & Row) speaks of fair use as part and parcel of the definition of the copyright owner’s right. And indeed the genesis of the doctrine is in Justice Story’s determination of whether there was infringement, not a separate fair use inquiry.
Courts should therefore stop putting lack of evidence as a reason why sj shouldn’t be granted. Instead it’s part of the scope of copyright owner’s rights.
Chris Buccafusco, Chicago-Kent: Why do people object to uses of their works? Fair use is supposed to provide a safety valve when those objections are not related to legally cognizable interests. Copyright is consequentialist, reserving some rights to authors and others to users/downstream creators. But people create for lots of reasons, not just (or often) © incentives.
Dave Fagundes and I have started to look at why people object to copying. Moral foundations: Harm rationales; unfairness/lack of reciprocity; purity; loyalty; authority. Authors who object to “murdering their babies”: authority rationale; Scientologists; Christian sculptor upset by appearance of his sculpture in The Devil’s Advocate in a pagan/heathen context. Can we learn by systematizing these reasons?
How well does fair use respond to diverse and heterogeneous moral concerns authors and owners have about use of their work? Which factors do the work of excluding noneconomic objections? Is fair use doing a better job of constraining certain kinds of nonmarket objections than others? Gotten pretty good at dealing with objections that are really just about control, like Scientology. Not as good with objections dealing w/ purity or fairness.
To what extent should fair use become even more psychologically realist? Fair use is a story of market harm, but creation has less to do with markets than copyright claims. If we start recognizing true creative motivations, do we need to recognize certain moral objections if they turn out to affect creative production?
Duncan Macfarlane, Macfarlane Law: Sync licenses versus cover rights. Sync licenses are in practice moral rights: artists have turned down sync licenses simply because they didn’t want their music used in a particular way. Sync licenses are also often exclusive, so an artist must pick which project to go with. Freeplay v. Maker litigation: using AV works without sync licenses.
Must copyright owner consider fair use before sending a takedown? Lenz v. Universal: so obviously fair use that Universal shouldn’t have issued a takedown? He doesn’t think so. In his mind, she’s using the music as originally intended; her children are interacting w/ the music. Not incidental and background, and anyway incidental and background doesn’t make it fair use. Third factor doesn’t weigh one way or another (in 29 second film). Regarding market effect: SCt said it wasn’t the single use, but whether unrestricted and widespread similar uses would negatively impact the market. YouTube has dramatically impacted the market; some of his client left the creative industries because they feel their work is too easily used. He understands that YouTube is here to stay and fair use is here to stay.
Paul Heald, Illinois (w/Buccafusco): Study on parody, testing theories of tarnishment. Test theory: in copyright, the existence of Madeline Does Dallas might lead to awkward questions during bedtime stories: used to justify term extension as well as the result in Air Pirates: strong sexual connections w/ a work harm it. Testimony: we can’t have Mickey Mouse porn or Superman porn. (Oh, do I have some news for those people. Also, see the IMDB entry for this movie.) TM: similar claims—brand associated with incompatible values or unpleasant images = less likely to buy. Photos of the allegedly tarnishing uses themselves are “potent witnesses” even w/out other evidence of harm.
Summary of consumer psych research on sex in ads: sex generally increases brand recall; may have negative effect on brand perception depending on context; marginally positively influences purchasing decisions. Baseline survey: late-night movies, eliciting opinions on pairs of movies, e.g., You’ve Got Mail/Sleepless in Seattle. Then try to tarnish one movie and see whether you get different results. (If you pair w/some other film before asking about the two, it doesn’t affect results so it’s not a reminder effect.)
Then tested You’ve Got She-Male and Bi-Tanic, then ten pairs later You’ve Got Mail and Sleepless in Seattle. The claim is that mere knowledge of the tarnishing use is enough to lessen the value of the underlying mark. We also asked would you like a T-shirt from movie A or B. Haven’t found a whole lot. Significant negative difference in whether they want a T-shirt with one movie, but exposure to tarnishing movie doesn’t move consumer preference between movies.
Next iteration: test movie title recall and desire to watch a sequel. We do ask age, gender, religion, porn tolerance, movie watching frequency, politics (Amazon Turk folks are more likely porn tolerant and liberal). So far no demographic data has proved significant either.
Mark McKenna, presenting for William McGeveran, Minnesota: How do courts treat parody in TM? Parody is less relevant in TM than copyright. Relevant doctrinal category isn’t parody, resulting in diminished importance of defining what a parody is. His takeaway: courts overwhelmingly protect the parody and declare it noninfringing, with overwhelmingly old exceptions, most predating Campbell. TM law was in expansionist mode, but doctrine has settled back into a parody-protective stance. There’s a reason it’s been easier in TM: don’t present a direct conflict w/ the right—TM is not a right against mere use, but against use w/certain effects; © does protect against mere use. Developing consensus around expressive uses/use of marks in expressive works, a set of doctrines prominently associated with Rogers v. Grimaldi. (Older: nominative fair use or even using descriptive fair use.)
Problem is not w/decided cases and we should stop saying that it is. Please. There are a few outliers, but as compared to any other doctrine, courts get it right. Real problem is at the C&D stage. Old cases have incredibly long legs, asserted in letters even now—Enjoy Cocaine, Balducci, Mutant of Omaha—8th Circuit is especially to blame. But even the 8th Circuit seems to be moving. C&D are effective in part b/c of these older cases, but also trades on a narrative that McGeveran wants to help us avoid: lawyers too often repeat that there’s uncertainty about what will happen, making people reluctant to fight back. Courts get the right results, but often through unpredictable doctrinal categories/doctrines that require fact development and thus aren’t used early in the case.
Thus, we should focus on reforming procedural dimensions to fast-track certain dismissals. Embrace of Rogers is helping, since artistic relevance and explicit misleadingness can often be answered early in the case. Give confidence to people to tell TM owner to pound sand.
Mark Wittow, K & L Gates: What happens to people who can’t hire a lawyer but approach free legal clinics, like Washington Lawyers for the Arts and ArtistsTrust, Wayfind. Sony v. Faulkner estate—people can sue for anything, even a single sentence, even though he’d previously have thought no one in their right mind would’ve sued over that. You always have to advise in the context of risk. After Campbell: There’s no benefit/detriment to asking permission/skipping a request. If what you’re doing is likely to stay under the radar/not make much money, don’t ask permission.
What about the non-brought cases such as Girl Talk? Nobody’s willing to take him on for fear of making bad law; also he doesn’t make any money from his samples.
Attribution: people often want to know whether it’s helpful to attribute: he says it doesn’t help for © but is the right thing to do.
Loren: you need to plead a plausible claim of similarity. If you stay pristine, can’t be 12(b)(6), which happens in the Brownmark case where the court of appeals says, do it on the pleadings under 12(c). Has seen Iqbal interpreted to dismiss a fair use affirmative defense because there weren’t enough facts pled to make fair use plausible: ugh. How do you prove lack of harm? Innovative approaches, like HathiTrust, where they asked the Ps in interrogatories: state any harm. Court points to the answer—we don’t have any—as evidence of no harm. If burden were on plaintiffs, we’d have to have a full harm debate.
Preliminary injunction stage: shifts the burden to Ps. We see that in Perfect 10 v. Amazon: court excised a portion of the opinion saying that likely success inquiry should consider likelihood of overcoming fair use defense. So this concept does have impact, especially in procedural aspects of the case.
Naeve: after Lenz and Brownmark, is there an affirmative obligation to do a fair use analysis?
Macfarlane: Lenz is undecided; the argument is that the burden should be on the copyright owner. Google receives 10 million+ takedown notices/month. Fair use would be a sword rather than a shield. Unworkable. (NB: attorneys’ fees eligibility already makes fair use a sword in some circumstances.) DMCA contemplated that counternotification would be used to get a work back up promptly. Proven to work. (RT: actually, counternotification requires the work to stay down for a number of days.)
Naeve: with Tiffany v. eBay, burden is on the TM owner. Sometimes, is fair use so obvious that there should be an obligation?
Wittow: technical management problem. Sampling tech detects things automatically. Not really possibility of fair use analysis. But once there’s a fair use response, the action needs to shift and the veracity of initial notice is beside the point; there should be real proof it’s not fair use.
Loren: does the ISP have an obligation to consider fair use? The © owner will never sue unless the ISP refused to take down. The user won’t be able to sue, as long as ISP behaves according to DCMA. That’s the point of §512; also user agreements make it hard to sue. Hard to construct a theory of liability for failure of ISP to consider fair use.
Naeve: how do you counsel clients on parody/satire?
McKenna: not even a strong distinction in Campbell; parody was just a paradigmatic example of transformativeness. Maps well onto some uses and not others. Transformative use means more than parody, and that’s a good thing as the dilution of this always unstable parody/satire distinction became more apparent.
Heald: Court was thinking about an old case in which Jack Benny skit was held liable for taking too much.
Buccafusco: some of our porn versions explicitly say “parody” or “a porn parody” on them and we don’t see any differences in results; some appear to poke fun at the original and others don’t, and again there doesn’t seem to be a difference. Maybe viewing would make a difference, but the harm claim doesn’t depend on people viewing, just knowing about the parodic version.
Is/ought distinction: law need not adopt moral outrage. Can stay committed to a brand of consequentialism that promotes creativity and preserves opportunities for sequential innovation. First Amendment externalities.
Naeve: how do you counsel v. defamation?
Wittow: people have brought me defamation problems, mixed in w/copyright issues. Defamation is so much easier b/c the rules are pretty straightforward; it’s not that you can’t get a bad verdict, especially outside the US, but it’s easier—comparison highlights how much harder it is to advise someone on fair use. Fact is a defense, opinion is a defense, and public figure changes the standard entirely. It will be the unusual parody that isn’t opinion and isn’t about a public figure. Most people worry about defamation for no reason.
Buccafusco: speculates that for a lot of people, unauthorized uses that we think of as parodies feel like defamation to the authors—not opportunities for cultural exchange but individually felt harms—emotional, or other kinds of moral interests.
Heald: argues that we have moral rights functionally in US law, at least for music; fair use may be used to fight against that.
Said: falsity is a requirement for defamation. When defamation is pled in such a way to object to something that isn’t squarely provable as false, it’s operating the same way as moral rights in copyright. (See why I’ve written that this makes dilution unconstitutional.) But there’s a strong privilege protecting against abuse of right: fair use, and burden of showing falsity/actual malice for public figure.
Naeve: we do overlap with defamation, rights of publicity, TM. You might have one creative work that intersects w/all these areas.
Hughes: What about the existing fame of You’ve Got Mail—what if it’s so powerful that the effect of You’ve Got She-Male doesn’t come through?
Heald: in the next iteration we will be doing recall—ten titles you remember from the survey. They won’t have any images in front of them.
Buccafusco: some of them have variation in the sample—but so far there don’t seem to be differences across comedies, children’s films, etc.
McKenna: the Q is whether there’s any effect on demand. We seem to be mashing up a dilution effect on demand for the work v. demand for the mark. There is some work on marks alone, which finds pretty much the same thing.