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On March 7, 1994, the U.S. Supreme Court decided for the first time that a parody may be a copyright fair use. In the 25 years that followed, the High Court’s unanimous 9-0 ruling in Campbell v. Acuff-Rose Inc., 510 U.S. 569 (1994), has been cited in more than 500 court decisions.
But the Supreme Court’s pronouncement left questions and controversies in its wake. These have included: criticism of the widespread judicial embrace of Campbell’s emphasis on “transformative” in deciding fair use cases; distinctions between fair or license-required-derivative uses; the drafting of jury instructions; how courts handle the way fair use is raised; and attorney fee awards in fair use disputes.
The Campbell litigation arose out of the 2 Live Crew’s unauthorized rap version of Roy Orbison’s rock classic “Oh, Pretty Woman.” Cases involving rock music had been to the U.S. Supreme Court before. In one, the Supreme Court denied punitive damages to the promoter of a summer concert series in Newport, RI, who sued after the city council canceled a concert for fear that the jazz-rock band Blood, Sweat and Tears would attract a rowdy crowd. Newport v. Fact Concerts Inc., 453 U.S. 247 (1981). In another case, the Supreme Court held that the City of New York could control overall concert volume levels in Central Park so long as the sound engineer the city hired deferred to artists about how vocals and instruments were mixed within that sound level. Ward v. Rock Against Racism, 491 U.S. 781 (1989).
The 2 Live Crew case, however, marked the first time rap music reached the nation’s highest tribunal. In typical fashion, the court chose to hear a case with consequences that reached far beyond the litigants themselves. “There’s an important First Amendment issue here,” said Bruce Rogow, who argued the case for the 2 Live Crew. “If you don’t give parody room to breathe, creativity will be stifled.”
The Supreme Court previously issued a few fair use decisions. In 1984, the High Court ruled — in a majority opinion by Justice John Paul Stevens — that non-commercial home videotaping of TV broadcasts constituted fair use. Sony Corp. of America v. Universal City Studios Inc., 464 U.S. 417 (1984). In 1985, the Supreme Court decided — in a majority opinion by Justice Sandra Day O’ Connor — that The Nation magazine committed copyright infringement when it published without permission the “heart” of the memoirs of former President Gerald Ford — approximately 300 words describing Ford’s Watergate pardon of President Nixon. Harper & Row Publishers Inc. v. Nation Enterprises, 471 U.S. 539 (1985).
Roy Orbison’s “Oh, Pretty Woman,” which Orbison co-wrote with Bill Dees, offered up an idealized depiction of female beauty. 2 Live Crew’s “Pretty Woman” used the opening lyrics, vocal hook and lead guitar riff from the Orbison/Dees song to taunt “big, hairy” and “two-timin’” women.
The 2 Live Crew’s Luke Campbell described his group’s recording as “a typical encounter in the hood.”
Under the federal Copyright Act’s compulsory licensing provision, once a song is published, anyone can record it — using essentially the original lyrics and melody — subject to payment of a statutory fee. See, 17 U.S.C. §115. Permission of the copyright owner is generally required if new lyrics are used. The numerous cover recordings of “Oh, Pretty Woman” ranged from a soulful version by singer Al Green to one by hard-rockers Van Halen. The song had also been featured in films like Pretty Woman, starring Julia Roberts.
The 2 Live Crew’s cut was originally slated for the rap group’s controversial As Nasty As They Wanna Be album. But according to Luther Campbell’s general counsel Allen Jacobi in an interview with this author not long after the Supreme Court Campbell decision, “I said, ‘Don’t put it on As Nasty. It’ll been seen as a dirty version. You’re better off putting it on [the 2 Live Crew’s profane-less] As Clean As They Wanna Be.’”
Jacobi advised Linda Fine, the general manager of Campbell’s record label, to send a copy of the rappers’ “Pretty Woman” to Orbison’s Nashville publisher, Acuff-Rose, to secure a derivative use license. Continued Jacobi, “Acuff-Rose wrote back, ‘We regret we can’t allow you to use the parody.’ As soon as I saw they used that word to describe our cut, I said to put it on the album.”
As Clean As They Wanna Be credited “Pretty Woman” to Orbison and Dees and cited Acuff-Rose as the publisher. Acuff-Rose was anything but pleased. On June 18, 1990 — two weeks after a South Florida federal court had ruled that the lyrics of As Nasty As They Wanna Be were obscene — Acuff-Rose filed suit against Luther Campbell, Campbell’s record company and the 2 Live Crew in Nashville federal court. (The U.S. Court of Appeals for the Eleventh Circuit later overturned the obscenity ruling. Luke Records Inc. v. Navarro, 960 F.2d 134 (11th Cir. 1992), cert. denied, 506 U.S. 1022 (1992).)
During the litigation, the 2 Live Crew submitted an affidavit by folk humorist and music historian Oscar Brand. Brand acknowledged the substantial similarities between the Orbison-Dees and the 2 Live Crew songs. But he emphasized that the 2 Live Crew juxtaposed vocal keys for comic effect and added “scratching” — the hip-hop technique of rhythmically creating sounds by maneuvering a vinyl record back and forth under a turntable needle.
The 2 Live Crew, like other rap artists, utilized its lyrics as protest, Brand said. “This anti-establishment singing group is trying to show how bland and banal the Orbison song seems to them. It’s just one of many examples of their derisive approach to ‘white-centered’ popular music.”
Nashville federal Judge Thomas A. Wiseman Jr. granted the 2 Live Crew’s pretrial motion to dismiss the suit by turning it into a grant of summary judgment for the defendants. In a January 1991 ruling, Judge Wiseman observed that “a song is difficult to parody effectively without exact or near exact copying.” He concluded, “The odds of a record collector seeking the original composition who would also purchase the 2 Live Crew version are remote.” Acuff-Rose Music Inc. v. Campbell, 754 F. Supp. 1150 (M.D.Tenn. 1991).
Acuff-Rose took Judge Wiseman’s decision to the U.S. Court of Appeals for the Sixth Circuit. Nashville was a songwriting Mecca, but the “Oh, Pretty Woman” case gave the appellate court its first chance to apply the fair use test to musical compositions. The Sixth Circuit reversed the district court’s ruling. “[T]he factors involving the commercial nature of the use [i.e., to sell 2 Live Crew records] and the damage to the defendant are of particular significance,” the Sixth Circuit said. From this “blatantly commercial purpose,” the appeals court “presume[s] that a likelihood of future [economic] harm to Acuff-Rose exists.” Acuff-Rose Music Inc. v. Campbell, 972 F.2d 1429 (6th Cir. 1992).
The 2 Live Crew petitioned the U.S. Supreme Court to take the case, which it did. In his March 1994 majority decision in Campbell, Justice David Souter looked first at the purpose-and-character-of-use prong of the Copyright Act’s four-part, fair use test in 17 U.S.C. §107. Justice Souter wrote, “The central purpose of this investigation is to see … whether the new work merely ‘supersede[s] the objects’ of the original creation … or instead adds something new, with a further purpose or different character altering the first [i.e., underlying work] with new expression, meaning, or message.”
Justice Souter continued that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” He added: “While we might not assign a high rank to the parodic element here, we think it fair to say that 2 Live Crew’s song reasonably could be perceived as commenting on the original or criticizing it, to some degree” by taking “the naiveté of the original of an earlier day” and rejecting “its sentiment that ignores the ugliness of street life and the debasement that it signifies.”
To do this, Justice Souter said the 2 Live Crew could fairly use the “heart” of the original — the opening lyrics and guitar riff — from the Orbison-Dees song. “If 2 Live Crew had copied a significantly less memorable part of the original, it is difficult to see how its parodic character would have come through.” Moreover, Justice Souter noted, the 2 Live Crew “thereafter departed markedly from the Orbison lyrics for its own ends.” (In a concurring opinion, Justice Anthony Kennedy wrote: “As future courts apply our fair use analysis, they must take care to ensure that not just any commercial take-off is rationalized post hoc as a parody.”)
The Supreme Court’s Campbell ruling didn’t end the “Oh, Pretty Woman” litigation. Instead, the justices sent the case back to Judge Wiseman in Nashville to determine whether the rap group’s repeated use of the Orbison guitar riff throughout its recording was excessive. The Supreme Court also wanted the lower court to examine whether the 2 Live Crew had hurt Acuff-Rose’s ability to license non-parody rap versions of “Oh, Pretty Woman.” A settlement was negotiated, however, after the case was remanded. Under the agreement, Acuff-Rose gave the 2 Live Crew what the rap group wanted in the first place: a compulsory license to use the Orbison-Dees song.
“Transformative” Focus Criticism; “Derivative” Works
Over time, the Supreme Court’s adoption of and emphasis on “transformative use” has been widely used in fair use cases. In addition, some courts have expanded the requirement that a “fair use” work need comment on the underlying work. In Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), the U.S. Court of Appeals for the Second Circuit found there is “no requirement that a work comment on the original or its author in order to be transformative” within the scope of Campbell.
But a pushback began against the central role that “transformative” use — which isn’t specifically named in §107 — is playing in fair use analysis. The U.S. Court of Appeals for the Seventh Circuit claimed that “asking exclusively whether something is ‘transformative’ not only replaces the list in §107 but also could override 17 U.S.C. §106(2), which protects derivative works” as an exclusive right of a copyright owner. See, Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014).
Section 101 of the U.S. Copyright Act defines a “derivative work” as “based upon one or more preexisting works … recast, transformed, or adapted.” (Emphasis added.)
“To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under” the Copyright Act, the Seventh Circuit said. The Seventh Circuit thus urged: “We think it best to stick with the [§107] statutory list, of which the most important usually is the fourth [i.e., “the effect of the use upon the potential market for or value of the [underlying] copyrighted work”). We have asked whether the contested use is a complement to the protected work (allowed) rather than a substitute for it (prohibited).”
To clarify potential confusion with “transformative” in Campbell, the Second Circuit stated in Castle Rock Entertainment Inc. v. Carol Publishing Group Inc., 150 F.3d 132 (2d Cir. 1998), that “[a]lthough derivative works that are subject to the author’s copyright transform an original work into a new mode of presentation, such works — unlike works of fair use — take expression for purposes that are not ‘transformative.’”
In Keeling v. Hars, 809 F.3d 43 (2d Cir. 2015), the Second Circuit cautiously embraced a New York district judge’s jury instruction that failed to set forth all four factors of the copyright fair-use test. In contrast to the concern raised by Sconnie Nation, the New York district judge had instructed the jury to focus on §107’s “purpose and character of use” prong to determine whether a claimed parody was “transformative” and thus a fair use. The judge told the jury that citing the full “list of [statutory fair use] factors [is] without much content or meaning.”
The Second Circuit agreed that the district judge’s “stated rationale — the desire to ‘put a little more content on the discussion,’ which the ‘list of factors’ alone lacked — [is] understandable, if not advisable.” But the appeals court qualified its affirmance by adding: “The safer course is for the trial judge to explain the application of all four [§107] factors, however briefly, based on the circumstances presented.”
How Fair Use Is Raised
In Lenz v. Universal Music Corp., 801 F.3d 1126 (9th Cir. 2015), the U.S. Court of Appeals for the Ninth Circuit decided in a startling ruling that copyright owners are required to conduct a fair use analysis prior to sending takedown notices to Internet service providers under the Digital Millennium Copyright Act (DMCA). Traditionally, though, fair use is an affirmative defense to be raised by a defendant, not a court or a potential fair use plaintiff.
For example, in Latimer v. Roaring Toyz Inc., 601 F.3d 1224 (11th Cir. 2010), the U.S. Court of Appeals for the Eleventh Circuit emphasized: “That a [First Amendment] constitutional right is involved does not mitigate a defendant’s burden of pleading its own affirmative defenses. Here, [the copyright infringement defendant] has not offered any justification for its failure to plead fair use. … [C]ourts considering the fair use defense have no interest that eclipses the party’s own interest in protecting its First Amendment right to fair use of copyrighted material. Thus, the district court erred in raising the fair use defense sua sponte.”
Even the Lenz appeals court noted Campbell v. Acuff-Rose stated “‘fair use is an affirmative defense’ where the district court had converted a motion to dismiss based on fair use into a motion for summary judgment. …” And in Katz v. Chevaldina, 900 F. Supp. 2d 1314 (S.D.Fla. 2012), a South Florida federal district court observed: “It is easy to see why a fair use defense typically cannot be analyzed upon a Rule 12(b)(6) motion [to dismiss]. … The court’s determination involves weighing at least four statutory factors, which usually requires making factual findings or relying on undisputed or admitted material facts.”
For example, the U.S. District Court for the Middle District of Tennessee denied a Rule 12(b)(6) motion to dismiss a copyright infringement suit filed by the owners of the song “Rocky Top.” House of Bryant Publications LLC v. A & E Television Networks, 3:09-0502 (M.D.Tenn. 2009). House of Bryant had filed suit over the unlicensed use of 12 seconds of “Rocky Top” in an episode of A & E Network’s City Confidential series. The district court found: “Here, because the defendant seeks the dismissal of the plaintiff’s Complaint without the benefit of discovery, there is nothing to ‘ease’ the court’s task of finding a transformative use. Moreover, … the transformative nature of ‘Rocky Top’ is unapparent from a basic viewing of the Episode.”
Attorney Fee Awards In Fair Use Disputes
Campbell v. Acuff-Rose wasn’t the only 9-0 copyright decision that the U.S. Supreme Court hand down in March 1994. In Fogerty v. Fantasy Inc., 510 U.S. 517 (1994), in a majority opinion by Chief Justice William Rehnquist, the Supreme Court set forth four non-exclusive factors a court should use in assessing attorney fees, under 17 U.S. §505, to a “prevailing party” in a copyright infringement action. The factors to be considered are frivolousness, motivation, objective unreasonableness, and considerations of compensation and deterrence.
How do courts employ the Fogerty factors in fair use litigations? In Balsley v. LFP Inc., 691 F.3d 747 (6th Cir. 2012), the U.S. District Court for the Northern District of Ohio had awarded attorney fees to a photo infringement plaintiff. Affirming, the Sixth Circuit found that in contesting the award, the “Defendant failed to analyze the case under the four-factor Fogerty test. Instead, it discussed only why the district court correctly decided that its invocation of the fair use doctrine was not frivolous ….”
On the other hand, in SOFA Entertainment Inc. v. DMG PJW Dodger Productions Inc., 709 F.3d 1273 (9th Cir. 2013) — after finding a transformative fair use of an unlicensed seven-second clip utilized in the Jersey Boys musical of Ed Sullivan introducing the Four Seasons vocal group on his 1960s TV show — the Ninth Circuit upheld a $155,000 attorney fees and costs award against the plaintiff clips-owner. The SOFA Entertainment court emphasized that, based on the plaintiff’s prior experience litigating against purported fair use of TV clips, the rights owner “should have known from the outset that its chances of success in this case were slim to none.”
The appeals court added: “When a fee award [under 17 U.S.C. §505] encourages a defendant to litigate a meritorious fair use claim against an unreasonable claim of infringement, the policies of the Copyright Act are served.”
Clearly, even with the dominance of “transformative” in fair use determinations since Campbell v. Acuff-Rose was decided, judicial controversies and varying approaches exist in how courts maneuver through copyright fair use cases. Most tantalizing, though, is whether the pushback by the Seventh Circuit in Sconnie Nation against transformative focus, and the caution signaled by the more liberal Second Circuit in Keeling v. Hars, gains more traction — or reflects more of a bump in the long-running judicial reliance on Campbell’s fair use blueprint.
Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and Professor of Music & Entertainment Studies at the University of Colorado’s Denver Campus. He is also an entertainment attorney, as well as author of the books Baby You’re a Rich Man: Suing the Beatles for Fun & Profit and They Fought the Law: Rock Music Goes to Court, the latter which is available in an updated, expanded edition in Amazon’s Kindle Store. For more information: www.stansoocher.com. This article is based in part on a presentation the author recently gave to the Nashville Bar Association.