The purpose of copyright protection under Article I, § 8, cl. 8 of the United States Constitution is “[t]o promote the Progress of Science and the useful Arts.” To further that purpose, Congress included the fair use defense in § 107 of the Copyright Act of 1976, as an affirmative defense to a claim of copyright infringement from engaging in activities like criticism, comment, news reporting, teaching, scholarship or research. A determination of fair use is made on a case by case basis, weighing the following four non-exclusive statutory factors: (1) the purpose and character of the use, (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.

Fair use is necessary to advance the arts and sciences by stimulating creative activity among authors, artists, and inventors, while  allowing  others  to  use  protected  works  in a limited fashion. However, what exactly constitutes the advancement of arts and sciences is not a bright-line rule.

The United States Court of Appeals for the Second Circuit considered the boundaries of the fair use defense in Cariou v. Prince, concluding that “appropriation artist” Richard Prince’s alterations of photographs taken of Rastafarians in Jamaica by classic photographer Patrick Cariou constituted fair use. In 2000, Cariou published a book of photographs entitled “Yes Rasta.” Prince purchased four copies of Cariou’s book and created thirty independent works as part of a gallery show called “Canal Zone.” Without permission from Cariou, Price altered Cariou’s photographs in a provocative way by painting over the subject’s faces, applying a tinted color to images, affixing headshots from “Yes Rasta” on other appropriated images, using inkjet printing and acrylic paint, pasting elements of musical instruments and enlarging the work up to one hundred times the size of the “Yes Rasta” photographs. Prince testified in the U.S. District Court for the Southern district of New York that he was not trying to create any new meaning or message through the “Canal Zone” show. Instead, his focus was to make a “fantastic, absolutely hip, up to date, contemporary take on the music scene.”

The District Court granted Cariou summary judgment that Prince’s work was infringing. In doing so, the court concluded that Prince’s  new  work had to comment on, criticize or relate historically to Cariou’s original photographs to be fair use. The district court found that Prince did not intend to comment on Cariou as a person, Cariou’s photographs, or aspects of popular culture closely associated with Cariou and/or his photographs and, therefore, rejected Prince’s fair use defense.

The Second Circuit reversed, holding that copyright law imposes no requirement that a new work comment on the original or its author in order to be fair use. Further, the Second Circuit found that a secondary work may constitute fair use even if it does not serve one of the purposes identified in the Copyright Act (i.e., criticism, comment, news, reporting, teaching, scholarship, and research), if the new work alters the original with new expression, meaning or message.

The Second Circuit heavily relied on a finding that Prince’s “Canal Zone” works were transformative of Cariou’s “Yes Rasta” photographs, noting that the heart of a fair use inquiry lies within the first statutory factor, the manner in which the copied work is used. If a secondary work transforms the original work by creating new information, character, expression, or meaning, the secondary work furthers the purpose of copyright protection. The issue, however, is how to determine when a secondary work is transformative.

The court relied on the Seventh Circuit’s conclusion in Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012), that the only evidence necessary to decide whether something is transformative is a side-by-side comparison of the original work to the secondary work. When comparing Cariou’s “Yes Rasta” photographs to Prince’s “Canal Zone” artwork, the Second Circuit did not consider any expert evidence and employed its own artistic assessment, holding twenty-five of Prince’s works were transformative since they “manifest an entirely different aesthetic from Cariou’s photographs” because “Cariou’s serene and deliberately composed portraits and landscape photographs depict natural beauty of Rastafarians and their surrounding environs,” while “Prince’s crude and jarring works... are hectic and provocative...” with “collages on canvas that incorporate color, feature distorted human and other forms and settings, and measure between ten and nearly a hundred times the size of the [Cariou] photographs.” The critical inquiry is how the work in question appears to the reasonable observer, not what an artist might say about the intent of the work.

In November, 2013, the United States Supreme Court rejected Cariou’s writ of certiorari, leaving the Second Circuit’s ruling in place. In March 2014, the parties reached an out of court settlement, so the question of who is a reasonable observer and whether that person would find the remaining five works to be transformative, will not be decided.

In late 2013, the U.S. District Court for the Southern District of New York again fell short of providing a bright-line rule. In The Author’s Guild, Inc. v. Google, Inc., the district court ruled that it was fair use for Google to digitize the full text of millions of copyright protected books without permission because Google used the protected books to create an “invaluable research tool” that “advances the progress of arts and sciences.” The court rejected a long-running challenge from individual authors and the Author’s Guild, a nonprofit advocacy group of authors, who claimed that Google infringed on countless copyrights through its “Google Books” program, begun in 2004 to digitally scan more than 20 million written works in their entirety.

Participating libraries can download a digital copy of each book scanned from their collections, but cannot obtain digital copies created from another library’s collection. Google creates more than one copy of each book it scans from the library collections, and maintains digital copies of each book on its servers and back-up tapes. Google has never requested permission from, nor provided compensation to, copyright holders for the digital copying or verbatim display of their copyrighted books.

Google uses optical character recognition technology to generate machine-readable text, creating a digital copy of each book. Google analyzes each scan and creates a comprehensive index of all scanned books. The index links each word or phrase appearing in each book with all of the locations in all of the books in which that word or phrase is found. The index allows a search for a particular word or phrase to return a result including the most relevant books in which the word or phrase is found. A user can search the full text of all the books on the Google Books database.

As a research tool, Google’s search engine responds to queries customized by a user to return a list of books in which the user’s search terms appear. The results are broken down into two pages: “About the Book” and “snippet view.” The “About the Book” page provides a user with advertisementfree information about a book in question, including links to sellers of the book and/or libraries that list the book in their collections. In the snippet view, Google divides each page into eighths for a “snippet” of verbatim text. Each search generates three snippets, but performing multiple searches using different search terms can return different snippets so that a single user can view many different snippets from a book by making a series of consecutive and slightly different searches. However, Google has taken security measures to prevent users from viewing a complete copy of a book from snippet view, such as “blacklisting” at least 10% of the pages in each book so that those pages will not appear as a snippet.

In September 2005, plaintiffs filed a lawsuit against Google alleging that Google committed copyright infringement by scanning copyrighted books and making them available for search without permission of the copyright holders. Google’s defense was fair use under §107 of the Copyright Act. The district court agreed that the plaintiffs had established a prima facie case for copyright infringement because Google, without authorization, digitally reproduced millions of copyrighted books, maintained copies of those books for itself on its servers and backup tapes, made digital copies for the Library Project partners to download, and displayed snippets of the books to the public. However, the district court sided with Google that the fair use defense allowed Google to use the protected works without permission from the copyright owners, even though Google Books digitized entire copies of books, which is usually a red flag in any fair use analysis. In granting Google summary judgment, the district court focused largely on the transformative nature of Google Books. The district court reasoned that Google’s use of the copyrighted works is “highly transformative” because the words in the scanned books are “being used in a way that they had not been used before.” Specifically, Google Books has created new and useful research tools by compiling a comprehensive word index, using book text to facilitate searches through the display of snippets, and transforming book text into data for purposes of substantive research like data and text mining. It was of no consequence to the fair use determination that Google is a for-profit entity and Google Books is a largely commercial enterprise, because Google does not engage in the direct commercialization of the copyrighted works. Google does not sell the scans it makes of the books, it does not sell the snippets it displays, and it does not run ads on the “About the Book” pages that contain snippets. For the reasons stated in the friend of the court briefs, the court found that Google Books provides significant public benefits because it “advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders.”

Although this decision provides examples of what constitutes advancement of the arts and sciences under the Copyright Act (positive impact in education, research, accessibility to books and preservation of books), it still falls short of providing a bright-line rule and expands the fair use defense analysis to include after-the-infringement considerations of usefulness or importance to society. The full impact of this decision will be delayed, as the plaintiffs are appealing the ruling to the Second Circuit.

Sources:

Cariou v. Prince, U.S. Court of Appeals for the Second Circuit, No. 11-1197-cv, April 25, 2013, cert. denied, November 12, 2013

The Authors Guild, Inc v. Google, Inc., U.S. District Court for the Southern District of New York, No. 05 Civ. 8136 (DC), November 14, 2013