On August 7, 2013, a three-judge panel of the Ninth Circuit Court of Appeals upheld a District Court’s summary judgment that punk band Green Day’s use of famous street art created and owned by Los Angeles artist Dereck Seltzer amounted to “fair use” and was not an infringing reproduction of the original work. Although it is a US decision about “fair use”, it provides guidance as to how one would approach “fair dealing” analysis from a Canadian perspective.

Background

The street art in question was a drawing of a contorted, wide-eyed, screaming face called Scream Icon. Seltzer created it in 2003 with an intention of addressing themes of youth culture. Many posters of the image were plastered around Los Angeles, including a certain brick wall on Sunset Boulevard which was photographed by a videographer, who would later use it in a video backdrop for a Green Day song performed during its 2009 concert tour. The song entitled “East Jesus Nowhere” deals with religious hypocrisy. The backdrop video for it included shots of the brick wall and the entire Scream Icon poster, however there was also a red spray-painted cross over the middle of the face, colour and contrast modifications, black streaks on the side of the face, as well as several images of Jesus Christ being defaced during the course of the video.

Fair Use Factors

Relying on the landmark 1994 US Supreme Court decision of Campbell v. Acuff-Rose Music Inc., both the lower court and the appeal court analyzed the four “fair use” factors and came to the conclusion that Seltzer’s copyright infringement claim had no merit and should not proceed. Those four US fair use factors are as follows:

Factor 1: the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes.

Factor 2: the nature of the copyrighted work.

Factor 3: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.

Factor 4: the effect of the use on the potential market for or value of the copyrighted work.

Before proceeding with the court’s analysis, let’s contrast that US test to the Canadian test.

Fair Use vs. Fair Dealing

The Canadian “fair dealing” analysis consists of two steps and six factors in the second step: Step 1, was the unauthorized copying for one of the enumerated statutory purposes? and, if so, Step 2, was the unauthorized copying “fair”?

For Step 1, the Copyright Act enumerates eight purposes for fair dealing: (i) research; (ii) private study; (iii) review; (iv) criticism; (v) news reporting; (vi) education; (vii) parody; and (viii) satire. The US fair use test does not have a similar initial purposive threshold and considers the purpose of the use as merely incidental to the overall fairness analysis.

For Step 2, the Supreme Court of Canada has enshrined this six-factor test to assess fairness:

  1. the purpose of the dealing.
  2. the character of the dealing.
  3. the amount of the dealing.
  4. alternatives to the dealing.
  5. the nature of the work.
  6. the effect of the dealing on the work.

As one can see from the similarity of the (underlined) wording in these US and Canadian fairness factors, the routes to non-infringement may be different but the destination is the same.

The Result in the Case

Getting back to the Green Day case, the court found that the purpose and character of the video backdrop was “transformative” of the original work under Factor 1. Scream Icon was merely used as raw material, one of many, in producing the four-minute video, which was primarily dealing with Christianity and displayed a completely different and distinct context than the youth culture message of the original poster on the brick wall. The video conveyed “new information, new aesthetics, new insights and new understandings” according to the court. Green Day’s use was only incidentally commercial, as the image was never used to promote concerts, CDs or other merchandise.

Under Factor 2, the court had no difficulty finding that Scream Icon is an original creative work meriting strong protection. However, the court viewed the wide public dissemination of the work as a mitigating factor in favour of Green Day, so it weighed only slightly in Seltzer’s favour.

Under Factor 3, the court found that while Green Day copied most of Scream Icon, both quantitatively and qualitatively, the artistic work was not divisible (so as to take no more than is necessary for an intended use), so this factor did not weigh against Green Day.

Under Factor 4, Seltzer himself testified that Green Day’s use of his work did not affect its value. Furthermore, Green Day’s use served a different market function than the original poster, such that there was no reasonable argument that the reproduction amounted to creating a substitute for the primary market of the work. Accordingly, this factor weighed in Green Day’s favour also.

In the end, the appeal court was satisfied that the lower court had not erred in dismissing the copyright infringement claim brought by Seltzer against Green Day.

Applying the Fair Dealing Test

So how could a Canadian court have possibly decided the outcome of the case? Let’s see.

Under Step 1, the purpose of the reproduction was arguably parody, so as to easily pass the threshold inquiry before moving to the “heavy lifting” analysis under Step 2, with these 6 factors:

  1. The purpose of the dealing: The dealing was transformative and not overly commercial.
  2. The character of the dealing: The video was only played during concerts, for 4 minutes.
  3. The amount of the dealing: Even though 100% of the original was copied, the use was still fair in light of the overall context, as described above.
  4. Alternatives to the dealing: Green Day could have used a video without the work in it.
  5. The nature of the work: The poster had been published and in wide circulation for over 6 years.
  6. The effect of the dealing on the work: The artist conceded that there was no effect on value, although it seems obvious that the dealing should have had somewhat of a positive effect on the original work in terms of making it (and the artist) more widely known.

Accordingly, a Canadian court using the Canadian test would likely have come to the same result. Despite different fairness tests, the goals are the same: to avoid a rigid application of a copyright statute and to promote the public interest in the dissemination of knowledge.

Conclusion

Although there are many aspects of US & Canadian copyright law that are significantly different and our Canadian courts are reluctant to apply US jurisprudence, there is nevertheless a discernible trend in the convergence of fair use and fair dealing analysis. This is a desirable jurisprudential direction, as Canada and the US share so much in terms of pop culture and the expressive rights and needs of users of copyrighted works. The more that a reproduced work is transformed, such as use in a different context or with a different purpose, and the more that the user adds value, adds information, adds aesthetics and so on, the greater the likelihood that the use will not be infringing. Such transformational users of works can proceed with more certainty and less fear of potential infringement allegations, even where entire works are copied.