Seltzer v. Green Day, Inc., USCA, Ninth Circuit, August 7, 2013

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  • Ninth Circuit panel affirms district court’s grant of summary judgment in favor of defendant rock band, holding that use of plaintiff’s artwork in video backdrop during concerts was transformative and entitled to fair use defense but reverses award of attorneys’ fees, finding that plaintiff’s suit was not objectively unreasonable.

Plaintiff, an artist and illustrator, created Scream Icon, a drawing of a screaming, contorted face, which he later reproduced for sale in poster form. The posters have been widely disseminated and have been plastered on walls as street art in Los Angeles and elsewhere. At various times, plaintiff has used Scream Icon to identify himself by placing the image on advertisements for his gallery appearances. In connection with its 2009-2010 concert tour, the band Green Day commissioned defendant, video designer Roger Staub, to create individual videos for each song on the band’s set list. Staub modified and used a photo he took of a Scream Icon poster in a Los Angeles alley for the video of the song “East Jesus Nowhere,” which addresses themes of religious hypocrisy. Staub’s video features graffiti, including at least three images of Jesus Christ that are defaced over the course of the video, and the center of the frame is dominated by an image of Scream Icon. In addition, Staub emblazoned a red cross across the Scream Icon face and modified the color and contrasts of the image in the four-minute video, which the band used during its tour. Plaintiff sued the band, its members, Staub, and various related entities for copyright infringement, trademark infringement, and assorted state law claims. The district court concluded that the video was fair use, granted summary judgment in favor of defendants on all counts, and awarded attorneys’ fees to the defendants. On appeal, the Ninth Circuit affirmed the fair use finding but reversed the lower court’s award of attorneys’ fees.

The court of appeals panel conducted its own review of the four statutory fair use factors and found that the most important factor, transformative use, was satisfied, emphasizing the religious themes in the video, which were absent from the poster, and noting that “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.” The court also found that while Green Day’s concert tour was undoubtedly commercial, the band had never used the image in its CD art or merchandising and had not exploited the image for commercial use.

Considering the nature of the copyrighted work, the second fair use factor, the court acknowledged that the underlying work was a creative work subject to strong protection but found that the factor was mitigated by the fact that plaintiff had previously published the work, controlling its first publication, and that Scream Icon had been widely disseminated on the Internet and on the streets of Los Angeles prior to the band’s use. With respect to the third factor, the video made use of plaintiff’s image in its entirety. In the court’s view, however, the image was not divisible and this factor “will not weigh against an alleged infringer, even when he copies the whole work, if he takes no more than is necessary for his intended use.” Finally, as to the alleged infringement’s effect on the market or value of the copyrighted work, the court found the factor weighing in favor of defendants, particularly in light of plaintiff’s own testimony that the video had not had any economic impact on his work. Green Day had not used the image in any of its merchandising, and there was no evidence to support a conclusion that its video had affected the potential market (such as through licensing) of plaintiff’s work. The court also found no error with the district court’s grant of summary judgment on plaintiff’s Lanham Act claims, given the absence of evidence that use of the mark was “sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind.”

On the issue of attorneys’ fees, however, the court disagreed with the district court and vacated the award in defendants’ favor. The district court relied on three facts in concluding that plaintiff’s claim was “objectively unreasonable” in awarding attorneys’ fees: 1) that Seltzer lost on summary judgment; 2) that three of the four fair use factors were in Green Day’s favor; and 3) that Seltzer’s deposition testimony “effectively conceded that the use was transformative.” The court of appeals emphasized that the Copyright Act does not create a “loser pays” system and that succeeding on summary judgment does not alone entitle a party to attorneys’ fees. In addition, in the court’s view, the determination of transformative use was a relatively close call. Even if plaintiff acknowledged the thematic differences between his work and the video, the court noted, his testimony was personal and not a legal concession and could not establish the objective unreasonableness of his legal claims.