The Ninth Circuit has ruled in favor of the band Green Day in a copyright case that gives much better guidance on fair use and transformativeness than this year’s earlier Prince v. Cariou Second Circuit case.  Despite copying an entire image, in the backdrop of a video that showed onstage at a multi-million dollar concert tour, the appeals court upheld judgment in Green Day’s favor because the use added new meaning and purpose, and thus was transformative.  It is a victory for expressiveness, but more importantly, a useful set of instructions that Prince failed to give.

The case concerned a visual image entitled Scream Icon by Derek Seltzer, depicting a “screaming, contorted face.”  Seltzer made numerous posters of the image, which he had both sold and given away.  Roger Staub is a photographer and professional set lighting and video designer.  Staub took a photograph in 2008 of a street corner than happened to have a posted of Screaming Icon visible on it.

In 2009, Green Day released its album 21st Century Breakdown.  In anticipation of a 2009-10 concert tour, Green day hired a company named Performance Environmental Design, which in turn hired Staub to assist in designing the set and visual effects for the concert tour.

Staub ultimately created a video backdrop for each of the songs that the band would play, such that the concertgoers would see the video behind or around the stage.  For the Green Day song “East Jesus Nowhere,” Staub depicted a brick alleyway covered in graffiti.  Over the course of the song, time passes at an accelerated pace and artists come and go adding new art and posters to the alleyway.  Some add and edit images of Jesus Christ, but Scream Icon dominates the center of the frame, copied in its entirety but altered somewhat.  Significantly, a red cross is pained directly on the face itself.  Seltzer learned of the video and demanded that Green Day stop using it on tour, which the band did.  Thereafter, Seltzer sued Staub and Green Day for copyright infringement.

Green Day defended the claim successfully in the District Court.  There being little doubt as to the fact of copying, the defendants argued that they had engaged in fair use under § 107 of the Copyright Act:

“Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit 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 upon the potential market for or value of the copyrighted work.”

As is so often the case, the analysis turned largely on the first factor, which as interpreted addresses whether the derivative work is “transformative.”  Citing the contentiousness of transformativeness, and the recent Prince v. Cariou decision specifically, the Ninth Circuit held that “Green Day used the original as ‘raw material’ in the construction of the four-minute video backdrop. It is not simply a quotation or a republication; although Scream Icon is prominent, it remains only a component of what is essentially a street-art focused music video about religion and especially about Christianity (images of Jesus Christ appear—and are defaced—several times during the course of the video).”

The court also focused on something that proved decisive in Prince the purposes of the two works.  Here, unlike Prince, the court had statements by Seltzer about the purpose (“themes of youth culture, skateboard culture, insider/outsider culture” and Los Angeles), but found that since those themes did not include religion, there was no overlap, and therefore a transformation.  Surveying the scattered caselaw on the topic, the Ninth Circuit summed things up as adding fundamentally new content or messages.  Applying that standard, the court found that Staub’s video met the standard.

Somewhat less persuasively, the court found that the video was “not commercial.”  Although largely a moot point in view of Seltzer’s testimony that the market for his work had not changed since the video’s creation (a lesson for any plaintiff: if you cannot articulate the harm that you have suffered, sooner or later your case is probably going to end badly), it seems strange to characterize a video seen by tens of thousands of concertgoers at a multi-million dollar tour by one of the best-known bands of the last 20 years as anything other than “commercial.”  But there it is.  the court also affirmed the dismissal of trademark-related claims, holding that Seltzer failed to prove his name was sufficiently associated with the image that the video diluted its value.

The Ninth Circuit is a thoughtful analysis of the fair use factors.  And in vacating an award of attorneys’ fees, the court acknowledges the difficulty of these decisions.  But unlike Prince, this case gives meaningful guidance about the fundamental considerations in considering transformativeness, and is a must-read for artists (original or appropriative) and users of secondary content.