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Those who represent the creators of visual expression — fine art and film — often sit on both sides of the intellectual property fence. Copyright protects the integrity of, and gives value to, the artist’s intellectual production; however, artists also incorporate and build on works created by others. For example, “appropriation art” is a school of contemporary art widely practiced in a variety of forms by visual artists. This art may involve verbatim appropriation of pre-existing images. Documentary film producers opine that they would readily sacrifice stringent copyright protection of their own works in order to incorporate into their productions the music, images and creative product of others. This tension between adequately balancing intellectual property rights such as copyright and trademark with the public interest in wider access and free expression is evident in a wider debate in the digital age, carried out in the media and scholarly commentary as well as in legal decisions. The heart of the matter is whether existing doctrines are flexible enough to create the breathing space required to permit the new technology to reach its full potential. During its 2003 term, the U.S. Supreme Court decided two copyright-related cases that have relevance to those who create, protect and license fine art images. Eldred v. Ashcroft, 123 S. Ct. 769 (2003), upheld the constitutionality of the Copyright Term Extension Act from 50 to 70 years. Dastar Corp. v. Twentieth Century Fox Film Corp., 123 S. Ct. 2041 (2003), held that �43(a) of the the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work in the public domain. Rejecting a First Amendment challenge in Eldred, the Supreme Court noted that copyright law and doctrine developed in response to concerns about the proper balance between intellectual property and free expression; thus, ideas and facts, as opposed to expression, are not copyrightable, and use of another’s copyrighted work without authorization is protected from a claim of infringement if the use is considered “fair” under �107 of the Copyright Act. Dastar has been read as a response to concerns of a shrinking public domain voiced by opponents of the Eldred decision. The gravamen of Fox’s claim was that, in marketing and selling an uncopyrighted television series, as well as labeling the series with its own credit without any reference to Fox, Dastar made a false designation of origin. The Supreme Court rejected the argument that “origin of goods” in the Lanham Act includes the creator of the underlying public domain work that Dastar copied. It held that “origin of goods” “refers to the producer of the tangible goods that are offered for sale,” not to the author of any idea, concept or communication embodied in those goods. Despite the narrow holding, Justice Antonin Scalia, writing for a unanimous court, reached out in dicta to limit copyright, noting that allowing an action under �43(a) for Dastar’s representation of itself as the producer would create a species of mutant copyright law that would limit the public’s rights to copy and use expired copyrights. Unprotected works were the equivalent of facts. These Supreme Court cases, as well as several lower court decisions involving the fair use doctrine, the Lanham Act and state law rights of publicity could be viewed as challenging the views of Professor Lawrence Lessig of Stanford Law School in his book Free Culture (Penguin 2004), and others in the CopyLeft movement. They view intellectual property as overly protective, flawed and an unjustifiable restraint on artistic expression, innovation, competition and trade. One could argue, however, that these cases show that traditional IP concepts, infused with First Amendment values, can adapt to the digital potential. FAIR USE AND PARODY The fair use doctrine from the infancy of copyright protection “has been thought necessary to fulfill copyright’s very purpose, ‘to promote the Progress of Science and useful Arts.’” Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 575 (1994). Recognized in common law, the doctrine is now codified in �107 of the Copyright Act. 17 U.S.C. 107. Section 107 provides an illustrative list of the purposes for which the doctrine may be invoked, including comment and criticism, as well as a now-familiar list of factors that courts should consider in determining whether a use is “fair.” These factors are the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the work used and the effect of the use on the market for the original. Campbell clarified the fair use defense, its basis in the Constitution and its particular application to parodies. Justice David Souter, speaking for the court, held that a parody’s commercial character is only one element to be weighed in a fair use inquiry, and that insufficient consideration was given to the nature of parody in weighing the degree of copying. Parody, like other comment or criticism, could claim fair use under �107. Souter wrote: “The first factor in a fair use enquiry is ‘the purpose and character of the use.’ … The central purpose of this investigation is to see … whether and to what extent the new work is ‘transformative.’” (quoting Judge Pierre Leval, “Toward a Fair Use Standard,” 103 Harv. L. Rev. 1105, 1111 (1990)). Although often criticized as both underinclusive and overinclusive and as a result-oriented label rather than a useful tool of analysis because of its lack of predictability, Leval’s use of “transformative” has continued to be the linchpin of fair use analysis and, as discussed below, is seeping into other areas of intellectual property analysis. Guided by Campbell‘s mandate, lower courts have continued to provide broad protection for parody. Recent cases have created what is tantamount to a presumption of “fairness” for parody and have responded to the demands of creativity with a robust articulation of the fair use doctrines and its First Amendment implications. In MasterCard Int’l v. Nader 2004 Primary Comm., No. 00 Civ. 6068, 2004 U.S. Dist. Lexis 3644 (S.D.N.Y. March 8, 2004), the Southern District of New York accorded wide latitude to an advertisement by Ralph Nader similar to the MasterCard “priceless” advertisements. The court in MasterCard stated that the “ultimate test of fair use … is whether the copyright law’s goal would be better served by allowing the use than by preventing it” and observed that “it has been found that once a work is determined to be a parody, the second, third, and fourth factors are unlikely to militate against a finding of fair use.” Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003), also allowed artistic creativity to trump copyright infringement and trademark claims. Thomas Forsythe, a self-taught photographer a/k/a Walking Mountain Productions, developed a series of 78 photographs entitled “Food Chain Barbie” in which he depicted Barbie in various absurd and often sexualized positions. Forsythe used the word “Barbie” in some of the titles of his works. Mattel sued alleging that the “Food Chain Barbie” series infringed Mattel’s copyrights, trademarks and trade dress. Forsythe described the message behind his photographic series as an attempt to “critique the objectification of women associated with [Barbie].” The 9th U.S. Circuit Court of Appeals held that Forsythe’s work constitutes fair use under �107′s exception. His work was a parody of Barbie and highly transformative. The amount of Mattel’s figure that he used was justified. His infringement had no discernible impact on Mattel’s market for derivative uses. Although summary judgment is said to be a mixed question of law and fact, the court’s willingness to dispose of the claims on summary judgment has benefited those less able to spend time and money on litigation. Thus, the court’s refusal to consider Mattel’s survey evidence on the issue of parody because “the issue of whether a work is a parody is a question of law, not a matter of public majority opinion” can only benefit the artistic community. In yet a further victory for artists, in Mattel Inc. v Walking Mountain Productions, 2004 U.S. Dist. Lexis 12469 (C.D. Calif. June 21, 2004), the court granted defendant Forsythe’s motion for attorney fees and costs. The court found that Forsythe was entitled to fees under 17 U.S.C. 505 of the Copyright Act since he validly asserted a defense for fair use protection and his claim furthered the purposes of the Copyright Act. In support of its fee award, the court found that Mattel’s arguments had been completely rejected and that the parodic character of the artist’s work was clear. Moreover, the court found that the corporation’s claims were frivolous and not brought in good faith. The court found that the artist’s request for fees under the Lanham Act was also warranted because the case presented the exceptional circumstances that allow for fees. Contrast Mattel with the well-publicized 1992 case involving the artist Jeff Koons’ sculptural appropriation of photographer Art Rogers’ “String of Puppies.” In Rogers v. Koons, 960 F.2d. 101 (2nd Cir. 1992), the 2d Circuit refused to recognize a fair use defense when Koons ripped the copyright notice from the photographs, and then sent the photographs to Italian fabricators to copy the work wholesale in the form of a ceramic sculpture as part of a claimed parody of society at large without comment on the photograph. The lack of a transformative use or critical comment also explains the court’s result in Elvis Presley Enterprises v. Passport Video, 357 F.2d 896 (9th Cir. 2003). The 9th Circuit weighed the four factors and held that the film biographer in this case did not use the copyrighted materials fairly. The court found that the video was commercial, not scholarly, and that the producers used many copyrighted works (10 percent of the series) and took the heart of the material. However, satire and comment protected a national comedy show in Sandra Kane v. Comedy Partners, 2003 U.S. Dist. Lexis 18513 (S.D.N.Y. Oct. 16, 2003). The court held that use of a brief clip from the plaintiff’s public access television show on a national comedy show in a satirical manner was fair use under �107. LANHAM ACT, PUBLICITY CASES Courts have shown similar sensitivity to protecting artistic expression when such expression has encountered claims under �43(a) of the Lanham Act and states’ common law or statutory rights of publicity. The 9th Circuit in Mattel stated: “When marks ‘transcend their identifying purpose’ and ‘enter public discourse and become an integral part of vocabulary,’ they ‘assume a role outside the bounds of trademark law.’ Where a mark assumes such cultural significance, the First Amendment protections come into play.” 353 F.3d at 807 (citing Mattel Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002). The 9th Circuit adopted the 2nd Circuit’s test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), rejecting the argument that First Amendment concerns are implicated only if there are no alternative means of expression. That case affirmed dismissal of Ginger Rogers’ claims seeking to prevent the use of the title Ginger and Fred in a Federico Fellini movie . The 2nd Circuit held that in the case of expressive speech, the traditional likelihood of confusion test “fails to account for the full weight of the public’s interest in free expression.” Accordingly, the 9th Circuit found that the public interest in artistic expression greatly outweighed the interest in protecting against potential consumer confusion over Mattel‘s sponsorship of Forsythe’s works. (The 2nd, 6th and 9th circuits now reject the “alternative means” test and hold instead that the Lanham Act should be applied to artistic works only when the public interest in avoiding confusion outweighs the public interest in free expression.) Somewhat ironically, the right of publicity originally developed from the common law right of privacy — the right to be left alone. See Samuel D. Warren and Louis D. Brandeis, “The Right to Privacy,” 4 Harv. L. Rev. 193 (1890). Generally speaking, in order to state a cause of action based on the right of publicity, a plaintiff must demonstrate that he or she has a valid and enforceable right in the identity in issue and that the defendant infringed upon the right through unauthorized appropriation for commercial purposes. In Hoepker v. Kruger, 200 F. Supp. 2d 340 (S.D.N.Y. 2002), the plaintiffs, an artist and the artist’s subject, alleged, among other things, that artist Barbara Kruger’s photographic image violated the subject’s right of privacy. The court concluded that in the right of privacy context, art is speech, and, accordingly, art is entitled to First Amendment protection vis-�-vis the right of privacy. In Comedy III Productions Inc. v. Gary Saderup Inc., 21 P.3d 797 (Calif. 2001), cert. denied, 122 S. Ct. 806 (2002), the California Supreme Court determined that only sufficiently “transformative” art was entitled to First Amendment protection against right of publicity claims. In Winter v. DC Comics, 69 P.3d 473 (Calif. 2003), the California Supreme Court applied the Comedy III Productions balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant transformative elements to the celebrity likeness. Unlike Comedy III Productions, where the court concluded that the lithographs on T-shirts bearing the likeness of the Three Stooges were not sufficiently transformative, in Winter, the comic books containing characters that evoke musician brothers Johnny and Edgar Winter contain something more than mere celebrity likeness. The court thus ruled that they were sufficiently transformative to receive First Amendment protection. In light of these recent cases, it is clear that artists and other creators of visual material have benefited from the delicate balance; however, lawyers advising clients in this area should proceed with caution. The balance is indeed sensitive and while the courts have articulated explicit tests, their application is far from objectively predictable. Barbara Hoffman practices art and entertainment law in New York City. She is chair of the International Bar Association committee on Art, Cultural Institutions and Heritage Law and editor of Exploiting Image and Image Collections in the New Media (Kluwer Law 1998). If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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