On August 7, 2013, the United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal of the plaintiff’s copyright infringement claim on the ground that defendants’ use of the plaintiff’s work was a fair use under 17 U.S.C. § 107. Dereck Seltzer v. Green Day, Inc., Performance Environment Design, et al., Case No. 2:10-cv-02103.  The Green Day case sets forth the extent to which the fair use doctrine presents a viable defense to a claim for copyright infringement, and how the issue may be resolved as a matter of law on summary judgment.

Under the Copyright Act, a copyright owner’s right to reproduce a protected work is not absolute.  Far from it.  Rather, the Copyright Act is designed to protect the rights of copyright owners, but also to encourage subsequent authors to build upon already-existing works.  The idea is that progress and creativity occur because people build upon the work of others.  And that is where the doctrine of fair use comes into play – courts are to avoid the rigid application of the copyright statute, when, on occasion, it would stifle the very creativity which that law is designed to foster.”  Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (quotation omitted).

Under 17 U.S.C. § 107, fair use of a copyrighted work is not an infringement.  But, to determine whether the use of somebody’s work is “fair,” there are 4 factors which courts consider:  

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
  2. the nature of the copyrighted work;
  3.  the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use on the potential market for or value of the copyrighted work.

17 U.S.C. § 107.

In Green Day, the plaintiff, Mr. Seltzer, had created a drawing of a contorted human face, referred to as the "Scream Icon."  Images of the "Scream Icon" appeared on posters and stickers in public spaces in L.A., including on a wall at Sunset Boulevard and Gardner Avenue.  The Green Day defendants hired Performance Environment Design, who in turn coordinated with Roger Staub, a photographer and set designer, to create the video backdrop for Green Day's 2009-2010 "21st Century Breakdown" concert.  For one of the concert songs, "East Jesus Nowhere," Mr. Staub created a four-minute video backdrop that included a composite image, which contained his photo of the Sunset/Gardner Wall that had an image of a Seltzer's "Scream Icon" poster.  Staub also added graphic elements to the image of plaintiff's work.  

In March 2010, Seltzer sued the defendants for direct and contributory copyright infringement, among other claims, after Green Day used the video backdrop at approximately seventy concerts and during the MTV Video Music Awards.  In response, the defendants did not dispute that Seltzer had a valid copyright and that they did not pay to use the "Scream Icon" image. Instead, they argued that the use of the video backdrop was a fair use of the “Scream Icon” image.  The district court agreed, and granted summary judgment. Seltzer appealed.

On August 7, 2013, the Ninth Circuit Court of Appeals affirmed the district court’s dismissal of the case on summary judgment on fair use grounds, even though it viewed the matter as “a close and difficult case.”  In its published opinion, the Court noted:  

  1. The defense of fair use applied even though defendants engaged in the unauthorized copying of plaintiff's work.
  2. Dismissal of the copyright claims on summary judgment was appropriate even though only 2 of the 4 fair use factors favored the defendants.  It so held even though it also expressly noted that one of the fair use factors actually favored the plaintiff, while the remaining factor was neutral.  The Court reasoned that factor 1 (the purpose and character of the use) and factor 4 (whether the defendant’s use of the plaintiff’s work affect the value of the plaintiff’s work) “are generally viewed as the most important factors”, and those factors favored the defendants.
  3. The central purpose of the first factor is to determine whether and to what extent the new work is “transformative.”   The more transformative the new work, the less importance the remaining factors will have.  Even though the question of whether a defendant’s work is transformative is oftentimes a hotly contested issue, it can be determined on summary judgment.  Indeed, citing the recent Second Circuit decision in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), the Court noted that summary judgment for defendants on fair use grounds may be appropriate even where, as in the Seltzer v. Green Day case, the defendants made “only slight alterations to the original”. Defendants had altered plaintiff's “Scream Icon” image by adding color and contrast, adding a brick background, and superimposing a red spray-painted cross over the modified image.  The Court ruled that the defendants’ video backdrop was transformative – it was not simply a republication of the Seltzer’s work, but rather the defendants used Seltzer’s image only a component of a larger statement about religion.  Even though the “Scream Icon” image was “prominent” in the defendants’ backdrop, the defendants' work’s expressive content and message was apparent.
  4.  It is clear that a defendant’s work may be transformative even where it does not comment upon the plaintiff’s original work.
  5. The fair use defense applied even though the defendants’ use of the plaintiff’s image was done in connection with a commercial enterprise (Green Day concerts), because the use was only “incidentally commercial” in nature – the band had never used the plaintiff’s image to market the concert, on merchandise or on albums.