Fair Use of Copyrighted Material in U.S Film Production

Issue 25 By Olivier A.Taillieu,[Copyright]

Movie producers in the U.S. often want to incorporate copyrighted material in the movie, such as an image or video in the background to set the tone or a well-known sound-bite that will give a scene context. Generally, use of copyrighted material requires the consent of the copyright owner, who will likely charge a license fee for the use. But under U.S. law, there is a notable exception that has been the source of much debate over the years – the Fair Use Doctrine.

This article will explain the Fair Use Doctrine as set forth in U.S. law and applied by American courts. In particular, it will focus on fair use of copyrighted materials in film and television, and show when (and why) some claims of fair use have failed.

I. What is a copyright?

A copyright is a set of exclusive legal rights authors and creators possess over their works for a limited period of time. These rights include copying all or parts of the work, making derivative works, distributing/ selling/ licensing the works, and performing/ presenting the work. The copyright begins when the work is created and fixed; the work does not have to indicate a copyright notice or be registered to carry a valid copyright. (17 U.S.C. Section 106.)

The Constitution of the United States says that the purpose of copyright is to promote science and the useful arts.1 Still today, that is the guiding principal behind every court’s decision regarding copyright infringement and fair use issues.

Facts, thoughts and ideas cannot be copyrighted; neither can words, names, slogans or other short phrases. In order to be copyrighted, the creation must be an original work, fixed in some medium (digitally, on paper, on film, etc.); a verbal presentation that is not recorded cannot be copyrighted. Works in the public domain -- such as works by the U.S. government and works with an expired copyright – can be freely copied by anyone.

Generally, for works created after 1978, the copyright lasts for 70 years beyond the life of the author/creator or, in the case of joint works, 70 years after the death of the last surviving author.2  For works first created and published  between 1950 and 1978, 3 the copyright lasts for 95 years. For works first created and published before 1950, the copyright lasts 28 years, but could have been renewed for another 67 years. In the case of anonymous works, pseudonymous works and works for hire (including works published by an entity),the copyright lasts for 95 years from the year of the work’s first publication, or 120 years from the year of its creation, which expires first.4

II. What is the Fair use Doctrine?

The Fair Use Doctrine allows for limited copying of a copyrighted work without the author’s permission. The doctrine was created in recognition of the fact that exceptions to exclusive rights are sometimes necessary when the public’s benefit from the unauthorized use far outweighs the rights of the author or artist without harming the value of the work.

Though some refer to “fair use” as a “right,” that is not exactly accurate. The doctrine is not an affirmative weapon that can be asserted to force an author or creator to authorize use of the work. Rather, “fair use” is an affirmative defense. When you use another’s copyrighted work without consent and they sue you for infringement as a result, you may claim “fair use” as your defense in the lawsuit-if fair use is proven, there is no infringement.

There is no clear legal specification that defines how much and when one can copy another’s copyrighted work; fair use is a flexible concept. Courts engage in a case-by-case analysis, considering the specific circumstances of each case to determine the existence of fair use. As a result, the legal trends are continuously changing and developing -- while previous case law may assist an analysis of fair use, it may not be conclusive and should be relied upon with caution.

Even though no clear rule defines the parameters of fair use, the statutory provision that sets forth fair use, 17 U.S.C. section 107, does offer some guidelines:

[T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include-

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(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 and value of the copyrighted work.

The list of potential fair uses in the statute – criticism, comment, etc. – is considered a non-exhaustive list. Even if a use is not included on the list, the four factors should be considered to determine whether it constitutes fair use. Pacific and Southern Co. v. Duncan, 744 F.2d 1490, 1495 (11th Cir. 1984). While not specifically listed, parody (a work that imitates a copyrighted work for a humorous or satirical purpose) is usually protected under the fair use doctrine as a form of criticism.

The real key to every fair use analysis is the four listed factors. Though some courts refer to the first and fourth factors as the more important, other courts have held that all four factors are of equal importance. The factors should not “be treated in isolation, one from another, All are to be explored, and the results weighed together, in light of the purposes of copyright.” Campbell v. Acuff-Rose Music Inc., 510 U.S. 569, 577-578 (1994).

III. Application of the four factors

A) FACTOR ONE: The Purpose and Character of the Use

This factor considers whether the new use helps fulfill the goal of copyright law – to stimulate and encourage creativity for the enrichment of the general public. The analysis of the purpose and character of the use includes consideration of (1) whether the use is commercial or non-profit/ educational in nature and (2) the transformative nature of the use.

1) Commercial v. Non-Profit or Educational use

Courts tend to find fair use more easily in non-profit uses than in commercial uses, though there are certainly plenty of examples of fair use in commercial efforts. If other considerations weigh in favor of fair use, the commercial nature of the use matters far less. The real question is not merely whether the new work is for-profit, but whether the new work specifically stands to profit from exploitation of the copyrighted material in particular without paying the regular license fee for it. Harper & Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 562 (1985).

“Although not controlling, the fact that a new use is commercial as opposed to non-profit weighs against a finding of fair use. [Citation] And the degree to which the new user exploits the copyright for commercial gain – as opposed to incidental use as part of a commercial enterprise – affects the weight we afford commercial nature as a factor.” Elvis Presley Enterprises Inc. v. Passport Video, 349 F.3d 622, 627-628 (9th Cir. 2003).

The fair use defense has a higher chance of success if the purpose of the use is instructional, informational or biographical – such as a documentary or educational text. For example, a copy used for teaching at a non-profit institution, distributed without charge to students by a teacher acting alone, spontaneously (instead of as part of a planned curriculum or institutional requirement) is likely fair use.

2) Transformative Nature

The more important consideration under the first fair-use factor is the “transformative” nature of the new work – whether the new work advances knowledge or the progress of the arts by adding something new to the original. If a defendant merely reproduces the copyrighted work without changing or adding to it in any way, it’s likely not fair use. On the other hand, the more a defendant has transformed the original copyrighted work, the more likely fair use will be found, even if the use is commercial.

The court will ask “whether the new work … merely supersedes the objects of the original creation, or instead adds something new, with a further purpose of different character, altering the first with new expression, meaning or message…” Campbell, 510 at 579.

If the new work uses the copyrighted work in a way that adds creativity and cultural value, that is more likely to constitute fair use. In contrast, it is not fair use to merely reproduce the original for the purpose of exploiting its original entertainment value.

For example, if a brief clip of a copyrighted film is shown in a new work for the purpose of commenting on it, criticizing it, or putting it in a new context, a court is likely to find fair use. This is especially true if there is some voice-over narration, dialogue or other context in which the clip appears that enhances the transformation.5

B) FACTOR TWO: The Nature of the Copyrighted Work

The second fair-use factor considers the original work itself -- whether or not it was published, and the level of originality and creativity involved in its creation.

If a copyrighted work is unpublished, the available scope of fair use is much narrower.  But an unpublished work does not enjoy an absolute privilege from fair use. Salinger v. Random House Inc., 811 F.2d 90, 95-97 (2nd Cir. 1987); New Era Publications Int’l v. Henry Holt & Co., 695 F. Supp. 1493 (SDNY 1988). Indeed, Congress amended the Fair Use statute to specify that fair use of unpublished works may be found upon consideration of all the factors combined. 17 U.S.C. section 107.

Additionally, the more creative, and less purely factual, the copyrighted work, the more likely it is to receive protection against claims of fair use. “The law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.” Harper & Row, 471 U.S. at 562. This is the case because more creative works lie “closer to the core of intended copyright protection”  than other works.6

For example, copyrighted works like songs, films and photographs taken for artistic or aesthetic purposes are creative in nature – they fit within the core of copyright protection, and strong arguments in favor of the other three factors must exist to support a fair use defense. On the other hand, works that are more factual in nature such as news broadcasts and news video footage are more conducive to fair use.7

C) FACTOR THREE: The Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole

The third fair-use factor evaluates both the quantity of the work taken (as in percentage of the whole) and the quality and importance of the portion taken. The more used, the more likely it is not fair use. Indeed, if a substantial portion of the original work is copied, that evidences the value of the copyrighted work and its resulting need for protection.

A user of copyrighted material should only copy the amount of the original work that they reasonably require to make their point. “If the [new] user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her.” Kelly v. Arriba, 336 F.3d 811, 820-821 (9th Cir. 2002). If it is necessary to use a copyrighted work in its entirety to make the resulting commentary, courts have found that weighs in favor of fair use. Id. at 821.

But courts do not just look at the percentage of the copyrighted work used in the new work – they also consider the particular portion used. “Regarding the qualitative nature of the work used, we look to see whether ‘the heart’ of the copyrighted work is taken – in other words, whether the portion taken is the ‘most likely to be newsworthy and important in licensing serialization.’” 8 Elvis Presley Enterprises, 349 F.3d at 630  (quoting Campbell, 510 U.S. at 586). If the new work copies only a tiny part – but arguably the most important part – of the original work, that may weigh against fair use.

The new use of copyrighted photographs or pieces of art can pose a unique problem under analysis of the third fair-use factor, because often photos or artwork are copied in their entirety. Typically, the court will consider the weight of the other three factors to determine whether a finding of fair use is appropriate.

In considering the claimed fair use of an art piece, one court looked at the standards used by the Library of Congress regarding royalties owed by public broadcasting entities for the use of published pictorial and visual works. Ringgold v. Black Entertainment Television Inc., 126 F.3d 70, 77 (2nd Cir. 1997).  The Library of Congress distinguishes between a “featured” use (full-screen or substantially full-screen for more than three seconds) and “background” display (anything less than featured use). If the image is part of the background, and/or if it blurry or barely (if at all) recognizable, then perhaps that should weigh in favor of fair use. On the other hand, if the image is featured, and/or is part of the display in part because of its recognizable quality, those factors may weigh against fair use. Id.9

D) FACTOR FOUR: The Effect of the Use upon the Potential Market for and Value of the Copyrighted Work

Courts often refer to the fourth fair-use factor as the most important factor.10 This factor considers the effect that the new use has on the copyright owner’s ability to exploit his or her original work. “It requires courts to consider not only the extent of market harm caused by the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant… would result in substantially adverse impact on the potential market for the original.’” Campbell, 510 U.S. at 590 (quoting Nimmer on Copyright, section 13.05[A][4]).

If the new work essentially replaces the original in the marketplace and/or appeals to the same audience as the original, it is less likely that a court will find fair use. An original and transformative new work is less likely to affect the market for the original, increasing the chance of success of a fair use defense.

If the new work is commercial in nature, “the likelihood [of market harm to the original] may be presumed. But if it is for a noncommercial purpose, the likelihood must be demonstrated.” Sony Corp. of America v. Universal City Studios Inc., 464 U.S. 417, 451 (1984). Accordingly, the burden of proof as to this factor rests on the defendant (the alleged copyright infringer) for commercial uses, but on the copyright owner for noncommercial uses.11

Courts do recognize that some market harm may come from fair uses such as parodies or negative reviews – uses strongly protected by the fair use doctrine – but that market harm does not work against a finding of fair use. Campbell, at 591-592.

IV.Examples of Applications in Film and Television

As stated earlier, previous cases may provide guidance for analyzing a potential fair use, but they should not viewed as conclusive to any new set of circumstances. Fair use is a flexible doctrine requiring a case-by-case analysis. The case law trends develop continuously, especially with the rapid advances in technology that allow for the sharing of works in a broader, faster way than ever before.

A) Use of a copyrighted image as part of the set decoration

In Ringgold v. Black Entertainment Television Inc., 126 F.3d 70, 77 (2nd Cir. 1997), the creator of a work of art well-known for conveying a part of the African-American experience sued a television production company for using a poster reproduction of her art in the set decoration for “ROC,” a sitcom series about an African-American family, without paying her a royalty. In one episode, the poster appears nine times for a combined total of 26.75 seconds. The defendants claimed the fair use defense and the federal district court agreed, but the circuit court disagreed and reversed the decision on appeal.

Under the first factor, the circuit court noted that the use of the poster was not remotely transformative and in fact, it was used “for precisely a central purpose for which it was created – to be decorative.” 126 F.3d at 79. The lower court had weighed the first factor in favor of the defendants because the poster was “incidental” to the scene and defendants did not use the poster to get viewers. The circuit court rejected that analysis, saying that it would “expand[] fair use to permit wholesale appropriation of copyrighted art for [set decorations for] movies and television.” Id. at 80.12

The district court had also weighed the fourth factor in the defendants’ favor because the use in the TV show was not likely to hurt poster sales and the artist had not claimed that her ability to license the poster had been “negatively impacted.” The circuit court said that the artist did not have to show a decline in her licensing since the infringing use, she only had to show a “‘traditional, reasonable or likely to be developed’ market for licensing her work as set decoration.” Id. at 81. Because the artist was be able to show that, the fourth factor should have weighed in her favor, and against fair use. In all, the circuit court found that the fair use defense was not applicable.

A film or television producer seeking to use a copyrighted image without the artist’s consent should do so with great caution. The focus will be on WHY and IN WHAT MANNER the image is being used. Is it being used for mere decoration – one of the purposes for its creation -- or is it the object of commentary or criticism within the new work? If the latter, it is more likely defensible as fair use. Moreover, if the image is transformed in some way in the new work, it will more likely be deemed fair use.13

B) Use of previous film clips in a movie or television show

Several courts have analyzed application of the fair use doctrine when a new work uses footage from copyrighted films. The issue has arisen most often when the new work is a documentary or biography -- those generally fall into the fair use category of “commentary or criticism.”

For example, in Monster Communications Inc. v. Turner Broadcasting System Inc., 935 F. Supp. 490 (SDNY 1996), the federal district court analyzed the fair use doctrine in the context of a movie biography about famed boxer Muhammad Ali that used less than two minutes of copyrighted video footage. The court determined that, although the biography was commercial, it “constitutes a combination of comment, criticism, scholarship and research” concerning “a figure of legitimate public concern.” The court found that the purpose and character of the biography weighed in favor of fair use. Id. at 493-494.14

In Elvis Presley Enterprises, a television biography about the life of Elvis used a substantial amount of copyrighted video footage. The court found that some uses of the clips were transformative because they were cited as historical reference points -- “the clips play for only a few seconds and are used for reference purposes while a narrator talks over them or interviewees explain their context in Elvis’ career.” 349 F.3d at 628. However, many of the film clips were played without much interruption or voice-over, if any. The court suggested that these clips were used in excess of the purpose of telling the story of Elvis’ life and “instead are simply rebroadcast for entertainment purposes that Plaintiffs rightfully own.” Id. at 629. The latter clips, which are not transformative, would not support a fair use defense.15

Although cases like Video Pipeline Inc. v. Buena Vista Home Entertainment, 192 F. Supp. 2d 321 (D. N.J. 2002), are not about a film that used copyrighted clips, 16 the court’s opinions are still instructive on the issue. The court stated that if the new use adds criticism or commentary to the original work, it would more likely be fair use. On the other hand, an aggregation of scenes from the movie – even if each scene is short and the total number of short scenes used is a small percentage of the overall movie – may reflect the themes and tone of the film in a way that interferes with the plaintiff’s ability to use its own previews to that end. Id. at 340. And a misleading arrangement of scenes or low quality clip may adversely affect the copyright owner’s market. Id. at 340-341.17

The overall theme of the cases addressing inclusion of previous footage has been fairly consistent. A new work that adds something new to the footage is transformative and more likely fair use. A work that merely airs the prior clips without interruption is likely doing so only to reap the entertainment value of the original clip, which is copyright infringement.

  1.U.S. Constitution, Article 1, Section 8, clause 8.
  2.17 U.S.C. 302 (a) and (b).
  3.There are more complex rules for earlier unpublished works.
  4.17 U.S.C. 302(c).
  5.See, e.g., Hofheinz v. A&E Television Networks, 146 F. Supp. 2d 442, 444 (SDNY 2001) (finding that a television biography of actor Peter Graves included fair use of copyrighted film clips because the clips were not shown to recreate the expression of the original film, but to enable the viewer to understand the actor’s modest beginnings – the transformative nature was enhanced by the biography narrator’s introduction of the movie clip as outdated and “campy”).
  6.Campbell, 510 U.S. at 586.
  7.See, e.g.,  L.A. News Serv. V. KCAL-TV Channel 9, 108 F.3d 1119, 1123 (9th Cir. 1997).
  8.The Elvis court noted that the defendants used television clips that were valuable primarily because of Elvis’ appearance on the shows, and defendants took the most familiar passages from Elvis’ most familiar songs that he sang on those shows. In many instances, therefore, the defendants copied “the heart of the work.” 349 F.3d at 630.
  9.See more in-depth discussion of Ringgold, below.
  10.See, e.g. Harper & Row, 471 U.S. at 566.
  11.Sony Corp. v. Universal City Studios, 464 U.S. 417, 451 (1984).
  12.The court added: “[I]t must be recognized that visual works are created, in significant part, for their decorative value, and, just as members of the public expect to pay to obtain a painting or a poster to decorate their homes, producers of plays, films, and television programs should generally expect to pay a license fee when they conclude that a particular work of copyrighted art is an appropriate component of the decoration of a set.” Id. at 79-80.
  13.See, e.g. Bill Graham Archives v. Dorling Kindersley, CITE (finding that defendant’s use of Grateful Dead poster images – for which he had sought consent to use but had not received it – was fair use because the images had been remixed, reduced, combined into a collage, supplemented with graphic art and textual explanations and commentary, and were being uses in a timeline and for historical purposes rather than the original purpose of concert promotion).
  14.See also Hofheiz v. A&E Television Networks, 146 F. Supp. 2d 442 (SDNY 2001), discussed in n.1.
  15.Though the appellate court repeatedly expressed disapproval of the lower court’s analysis, it felt bound by a limited standard of review and ultimately did not disturb the lower court’s ruling of fair use.
  16.In Video Pipeline, the defendant had combined and streamlined movie trailers for the purpose of promoting sales and rentals.
  17.The Video Pipeline court granted the plaintiff’s motion to enjoin the defendant’s use, rejecting the fair use defense.

About the author:
The author is Olivier A. Taillieu, Esq., a partner of Zuber & Taillieu LLP practicing intellectual property and other types of civil litigation. Details:www.zuberlaw.com

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