BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, January 18, 2002.)
There have been several recent decisions interpreting the fair use doctrine (section 107 of the Copyright Act) in the context of entertainment law issues. One, published in December, concerns the broadcast of clips from the film “G.I. Joe” on television news programs shortly after the death of Robert Mitchum, who had a supporting role in the picture.
“G.I. Joe” is a drama about American infantry soldiers as seen through the eyes of Ernie Pyle, the famed World War II correspondent. For his supporting role as Lieutenant Walker, Mitchum received the only Academy Award nomination in his long career. “G.I. Joe” was released theatrically in 1945, and since then has been shown on television over fifty times.
Video-Cinema Films, Inc. (“VCF”) is a New York corporation whose president and sole shareholder is Larry Stern. Believing that the picture would have value because news organizations would run clips from it as a result of its being the only movie for which Mitchum was nominated for an Academy Award, Stern started negotiating to purchase “G.I. Joe” with the University of Southern California (“USC”), which had been bequeathed the copyright in the picture.
On July 1, 1997, Mitchum passed away. As of that date, VCF and USC had exchanged various proposals, but had not reached an agreement. Nonetheless, anticipating that news organizations would air Mitchum obituaries containing clips from “G.I. Joe” , Stern spent hours in front of two television sets, noting each time that he saw a clip of the picture in a Mitchum obituary. He saw obituaries containing such clips on six out of the seven television stations he watched.
In September of 1997, Stern sent a revised draft contract to USC. This contained two new provisions granting Stern rights in the picture retroactive to March 1997, including the right to bring any infringement claims available as of that date. Prior to July 1997, none of the exchanged draft proposals had contained provisions providing for the purchase of any retroactive rights. Stern alleged that he had informed USC that infringing clips of “G.I. Joe” had aired on news broadcasts and USC gave his corporation the express right to pursue these infringements.
Ultimately, the contract under which VCF purchased the rights to “G.I. Joe” contained a provision granting it the retroactive rights. Thereafter Stern sent letters to approximately twelve different news organizations requesting payment of $5,000 or $10,000 each for use of “G.I. Joe” in the Mitchum obituaries which they broadcast. Each news organization responded that its use of the clip was fair. VCF then commenced an action for copyright infringement and unfair competition. Defendants moved for summary judgment on the grounds that the use of the clips from the picture was a fair use under section 107 of the Copyright Act.
The Court summarizes the nature and extent of the clips from the picture which were broadcast on news programs of ABC, CBS and CNN. The duration of the clips that were broadcast ranged from approximately six seconds to twenty-two seconds. Some were broadcast without sound as background to the news correspondent’s narration of aspects of Mitchum’s life, including his Academy Award nomination.
Among the exclusive rights granted to copyright owners under the Copyright Act is the right to reproduce the copyrighted work in copies. However, section 107 provides that “the fair use of a copyrighted work…for purposes such as criticism, comment, new reporting, teaching…scholarship, or research, is not an infringement of copyright.”
Even though fair use is a mixed question of law and fact, courts can resolve fair use determinations on summary judgment motions. The issue of whether the use of copyrighted material is fair requires a case-by-case determination within the context of the four non-exclusive factors enumerated in section 107. These are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit 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 or value of the copyrighted work.
Defendants, which have the burden of proving that their potentially infringing use was fair, need not establish that all of the factors favor them.
In discussing the purpose and character of defendants’ allegedly infringing use, the Court must consider whether the material was used for one of the purposes set forth in section 107 and whether it was used for a meaningfully different or “transformative” purpose than the original. Though not dispositive, the Court also considers whether defendants are for-profit or not-for-profit entities.
Because the clips were used in connection with news reports of the death of Mitchum, they were used for one of the purposes set forth in section 107. This results in a strong presumption in favor of the alleged infringer in respect of the first factor.
In determining whether a work is transformative, the Court looks to whether the new work adds something new, with a further purpose or a different character, altering the first with new expression, meaning or message. The Court finds that obituaries are transformative works because they do not intend to supersede the picture but, rather, to create a new work. “Simply stated, Defendants’ use of the clips from ‘G.I. Joe’ was for an entirely new purpose and character than the original film.” Defendants’ obituaries aim to inform the viewing public of the death of Mitchum and educate them regarding his impact on the arts. They were not used to convey a synopsis of the original film.
The fact that the defendants are for-profit entities is not dispositive for a finding against fair use. In the instant case, this is especially true, given that the new work is transformative in nature. The more transformative the new work, the less significant will be the other factors such as commercialism.
In sum, the Court finds that the purpose and the character of the obituaries favors a finding of fair use.
In analyzing the second factor, the Court notes that creative works are entitled to greater copyright protection than factual ones. Here, the picture is a fictional work, but, although this weighs against a finding of fair use, it is not dispositive. The picture was released theatrically and appeared on television numerous times. Because defendants did not usurp the first publication rights in “G.I. Joe” , they enjoy a slightly wider degree of latitude in making their fair use claim. The Court notes that the Second Circuit has found that where the plaintiffs’ work has already been published, this fact alone supports a finding of fair use under the second statutory factor. The Court finds that the second factor is neutral or, at best, slightly favors a finding against fair use.
The third factor, the amount of substantiality of the portion used in relation to the copyrighted work as a whole, involves both a quantitative and qualitative aspect. In considering the former, the Court must consider whether the clips formed a significant percentage of the original film and whether the quantity of the material used was reasonable in relation to the purpose of the copying. Here, the length of the clips used was far from substantial in comparison to the overall length of the film. The use of such de minimus amounts of a full-length feature film favor a finding of fair use.
The latter involves a consideration of whether the clips were essentially the heart of the film, which means taking the key informational or creative component that serves a substitute for the original. That did not happen here. Also, defendants1 use was reasonable in relation to the purpose of the copying. The obituaries sought to effectively detail Mitchum’s career and the clips used by defendants solely related to his performance and did not distill or reflect the entire movie.
Accordingly, the Court finds that defendants’ use was reasonable to produce their obituaries and the amount and substantiality of clips in the obituaries favors a finding of fair use.
The fourth factor, which focuses on the effect defendants’ use will have upon the potential market for or value of the copyrighted work, asks whether the challenged use provides a substitute for either the original copyrighted work or derivative works that a copyright owner would traditionally expect to create or commission. If the allegedly infringing use is not in competition with the copyrighted use, the fair use defense ordinarily is sustained. The Court finds that the alleged infringing clips “are too few, too short, and too small in relation to the whole” to undercut the market of the picture. In a footnote, it speculates that the obituaries could even have increased the demand for “G.I. Joe.”
The Court also rejects plaintiff’s claim that it will be deprived of a license fee for the use of the picture if defendants’ use is deemed fair. A copyright plaintiff is not entitled to a license fee for a use that otherwise qualifies for the fair use defense. Further, because every infringer who seeks to avail himself of the fair use doctrine potentially could have sought a license from the owner of the infringed work, plaintiff’s argument, if taken to its logical conclusion, would render this factor obsolete because it would favor the copyright owner in every case. The Court thus finds that the fourth factor also favors a finding of fair use.
Accordingly, the Court holds that the balance of factors favors a finding of fair use and grants defendants’ motion for summary judgment on plaintiff’s copyright claims.
1 Video-Cinema Films, Inc. v. Cable News Network, American Broadcasting Companies, Inc. and CBS Corporation, U.S. District Court, Southern District, reported in New York Law Journal, Volume 226, No. 117, (December 18, 2001)