709 F.3d 1273 (2013)

[1276] Jaime W. Marquart, Baker Marquart LLP, Los Angeles, CA, for Plaintiff-Appellant.

Walter R. Sadler, Leopold, Petrich & Smith, P.C., Los Angeles, CA; David S. Korzenik, Miller Korzenik Sommers, LLP, New York, New York, for Defendants-Appellees.

Before: DIARMUID F. O'SCANNLAIN, STEPHEN S. TROTT, and RICHARD R. CLIFTON, Circuit Judges.

OPINION

TROTT, Circuit Judge:

This is a copyright infringement suit over a seven-second clip of Ed Sullivan's introduction of the Four Seasons on The Ed Sullivan Show. Appellees Dodger Productions, Inc. and Dodger Theatricals, Ltd. (collectively "Dodger") used the clip in their musical about the Four Seasons, Jersey Boys, to mark a historical point in the band's career.

Appellant SOFA Entertainment, Inc. ("SOFA") claims Dodger infringed its copyright in the clip and cannot justify its unlicensed use of the clip as "fair use." SOFA is mistaken. By using the clip for its biographical significance, Dodger has imbued it with new meaning and did so without usurping whatever demand there is for the original clip. Dodger is entitled to prevail on its fair use defense as a matter of law and to retain the attorneys' fees award granted by the district court.

I

A.

SOFA owns copyright in a library of film, television, and other media, which it licenses for a fee. SOFA's library includes the entire run of The Ed Sullivan Show, which lasted from 1948 until 1971. The show's longevity was due to Sullivan's talent for spotting talent. At issue in this appeal is a seven-second clip from the January 2, 1966, episode of The Ed Sullivan Show wherein Sullivan introduces the band the Four Seasons ("the clip").

Dodger produced the musical Jersey Boys. Jersey Boys is a historical dramatization about the Four Seasons and the lives of its members — Tommy DeVito (Spring), Bob Gaudio (Summer), Nick Massi (Fall), and Frankie Valli (Winter). Each band member narrates one of the play's four acts, and each act offers that band member's take on a period in the Four Seasons' history.

The clip is shown at the end of the first act. Bob Gaudio stands to the side of the stage and addresses the audience: [1277] "Around this time there was a little dust-up called The British Invasion. Britannia's ruling the air waves, so we start our own American revolution. The battle begins on Sunday night at eight o'clock and the whole world is watching." As Gaudio speaks, the rest of the band is seen on a CBS studio stage preparing for their performance on The Ed Sullivan Show.

Just after Gaudio finishes his lines, the clip is shown on screen hanging over the center of the stage. Ed Sullivan assumes his "signature pose" and introduces the band to his studio and television audiences: "Now ladies and gentlemen, here, for all of the youngsters in the country, the Four Seasons...." As he concludes, Sullivan turns and, with an extended arm and open palm, directs the theater audience's attention to the stage. The screen goes dark, and the actors perform a rendition of the song "Dawn."

When the song ends, Gaudio resumes his position at the edge of the stage and addresses the audience again:

We weren't a social movement like The Beatles. Our fans didn't put flowers in their hair and try to levitate the Pentagon. Maybe they should have. Our people were the guys who shipped overseas... and their sweethearts. They were factory workers, truck drivers. The kids pumping gas, flipping burgers. The pretty girl with circles under her eyes behind the counter at the diner. They were the ones who really got us, and pushed us over the top.

B.

This suit began after Andrew Solt, SOFA's founder, attended a performance of Jersey Boys and realized that the clip appeared in the play. Upon determining that Dodger was using the clip without SOFA's permission or license, SOFA sued Dodger for copyright infringement. Dodger answered by asserting that its use of the clip constituted "fair use" under 17 U.S.C. § 107.

Both parties moved for summary judgment on Dodger's fair use affirmative defense. After a thorough discussion of the factors listed in § 107, the district court wholeheartedly agreed with Dodger that its use of the clip was fair.

In light of Dodger's success at summary judgment, the district court granted Dodger's request for $155,000.00 in attorneys' fees and costs. The district court viewed SOFA's infringement claim as objectively unreasonable and determined that awarding fees would deter future lawsuits that might chill the creative endeavors of others.

SOFA timely appeals the district court's summary judgment and the award of attorneys' fees to Dodger.

II

Whether Dodger's use of the clip constitutes fair use is a mixed question of law and fact that we review de novo. Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th Cir.2012). The district court's award of attorneys' fees to Dodger is reviewed for an abuse of discretion. Berkla v. Corel Corp., 302 F.3d 909, 917 (9th Cir.2002).

III

A. Fair Use

The Copyright Act exists "`to stimulate artistic creativity for the general public good.'" Mattel, Inc. v. MGA Entm't, Inc., 705 F.3d 1108, 1111 (9th Cir. 2013) (quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 45 L.Ed.2d 84 (1975)). It does so by granting authors a "special reward" in the form of a limited monopoly over their [1278] works. Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). However, an overzealous monopolist can use his copyright to stamp out the very creativity that the Act seeks to ignite. Stewart v. Abend, 495 U.S. 207, 236, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990). To avoid that perverse result, Congress codified the doctrine of fair use. Id.

17 U.S.C. § 107 states, "[T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching ..., scholarship, or research [ ] is not an infringement of copyright." It lists four factors to guide courts in their analysis:

(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 or value of the copyrighted work.

Id.

Congress's guidance, however, has not always been helpful. Many fair use cases still manage to approach "`the metaphysics of the law, where the distinctions are, or at least may be, very subtle and refined, and, sometimes, almost evanescent.'" Monge, 688 F.3d at 1171 (quoting Folsom v. Marsh, 9 F. Cas. 342, 344 (No. 4901) (C.C.D.Mass.1841)). Fortunately, this is not one of those cases. As our application of the statutory factors will confirm, Dodger's use of the clip is undoubtably "fair."

i. The Purpose and Character of the Use

The central inquiry under the first factor is whether the new work is "transformative." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Transformative works "add[ ] something new" to an existing work, endowing the first with "new expression, meaning, or message," rather than "merely supersed[ing] the objects of the original creation." Id. (internal quotation marks omitted).

Dodger references the Four Seasons' performance on the January 2, 1966 episode of The Ed Sullivan Show to mark an important moment in the band's career. At that point in rock & roll history, many American bands were pushed into obscurity by the weight of the "British Invasion," which was kicked off by the Beatles' performance on The Ed Sullivan Show. The Four Seasons, however, thrived. Being selected by Ed Sullivan to perform on his show was evidence of the band's enduring prominence in American music. By using it as a biographical anchor, Dodger put the clip to its own transformative ends. See Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 629 (9th Cir.2003) (recognizing that the defendant's "use of many of the television clips [of Elvis's performances] is transformative because they are cited as historical reference points"), overruled on other grounds as stated in Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 995 (9th Cir.2011) (per curiam); see also Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d Cir.2006) (concluding that the use of Grateful Dead concert posters to comment on and commemorate the performances they were designed to promote was transformative).

SOFA's argument that the clip was used for its own entertainment value is not supported by the record. Moreover, because Dodger's use of the clip is transformative, the fact that Jersey Boys is a commercial [1279] production is of little significance. Campbell, 510 U.S. at 579, 114 S.Ct. 1164. Therefore, the first fair use factor heavily favors Dodger.

ii. The Nature of the Copyrighted Work

The second fair use factor recognizes that some works — generally creative works, like fictional stories — "are closer to the core of intended copyright protection than others." Id. at 586, 114 S.Ct. 1164. An alleged infringer will have a more difficult time establishing fair use when he appropriates a work of that nature. Id. While the entire episode of The Ed Sullivan Show or the individual performances may be near to the core of copyright, the clip conveys mainly factual information — who was about to perform. Therefore, the second factor also favors Dodger.

iii. The Amount and Substantiality of the Portion Used

The third factor looks to the quantitative amount and qualitative value of the original work used in relation to the defendant's justification for the use. Id. 586-88, 114 S.Ct. 1164. SOFA does not challenge the conclusion that the seven-second clip is quantitatively insignificant, but argues that Dodger "attempted to capitalize on the central and most beloved part of The Ed Sullivan Show, namely, Ed Sullivan's introduction of popular new rock and roll acts," by incorporating the clip into the play. SOFA's argument is flawed in two respects.

First, the seven-second introduction is hardly qualitatively significant. Sullivan simply identifies the group that is about to perform and the section of his audience to whom the Four Seasons would appeal. It is doubtful that the clip on its own qualifies for copyright protection, much less as a qualitatively significant segment of the overall episode. See Murray Hill Publ'ns, Inc. v. ABC Commc'n, Inc., 264 F.3d 622, 633-34 (6th Cir.2001) (holding that the line "J.P. on J.R. in the A.M." served only a functional purpose, i.e., identifying the radio program, the radio station, and the broadcast time, and was not subject to copyright protection), overruled in part on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010).

Second, SOFA contorts the Supreme Court's use of the phrase "distinctive expression" in Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 565, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985), to give the false impression that Mr. Sullivan's "trademark gesticulation and style" is copyrightable. Copyright only attaches to an original work fixed in a tangible medium of expression, never in the underlying ideas or facts. Id. at 547, 105 S.Ct. 2218. The Court used the words "distinctive expression" to explain that defendant had copied sections of President Ford's memoirs that contained Mr. Ford's writing, as opposed to the events he was discussing. Id. at 565, 105 S.Ct. 2218.

Certainly movement and intonation are elements in an original performance, but SOFA's argument is not limited to Sullivan's performance in the clip. It is Sullivan's charismatic personality that SOFA seeks to protect. Charisma, however, is not copyrightable. See Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003-04 (9th Cir.2001) (holding that a person's name and likeness are outside the scope of copyright); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.01[B][1][c] at 1-30 (2012) ("A persona can hardly be said to constitute a `writing' of an `author.'") (footnotes omitted).

[1280] iv. The Market Effect

The fourth factor requires courts to consider the secondary use's impact on the market for the original work and the market for derivative works, including if the defendant's actions became "unrestricted and widespread." Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (internal quotation marks omitted). Where the secondary use is not a substitute for the original and does not deprive the copyright holder of a derivative use, the fourth factor weighs in favor of fair use. See id. at 591, 114 S.Ct. 1164 ("[W]hen ... the second use is transformative, market substitution is at least less certain...."); Ty, Inc. v. Publ'ns Int'l Ltd., 292 F.3d 512, 517-18 (7th Cir.2002) (stating that complementary uses, in the sense that a book review is complementary to the book it discusses, support a finding of fair use).

Jersey Boys is not a substitute for The Ed Sullivan Show. The clip is seven seconds long and only appears once in the play. Dodger does not reproduce Jersey Boys on videotape or DVD, which would allow for repeated viewing of the clip. Dodger's use of the clip advances its own original creation without any reasonable threat to SOFA's business model. Therefore the fourth factor also favors a finding of fair use.

v. Balancing the Factors

In the end, we are left with the following conclusion: Dodger's use of the clip did not harm SOFA's copyright in The Ed Sullivan Show, and society's enjoyment of Dodger's creative endeavor is enhanced with its inclusion. This case is a good example of why the "fair use" doctrine exists.

B. Attorneys' Fees

Section 505 of the Copyright Act gives discretion to district courts to grant to the prevailing party a "reasonable attorney's fee." 17 U.S.C. § 505. "The most important factor in determining whether to award fees under the Copyright Act, is whether an award will further the purposes of the Act." Mattel, Inc., 705 F.3d at 1111. To reiterate, the Act's "primary objective" is to "encourage the production of original literary, artistic, and musical expression for the good of the public." Fogerty v. Fantasy, Inc., 510 U.S. 517, 524, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). While no longer a prerequisite to a fee award, the "objective unreasonableness (both in the factual and in the legal components of the case)" of a losing party's claim can be a relevant indicator of whether the Act's primary objective is being served by the litigation. Id. at 534 n. 19, 114 S.Ct. 1023 (internal quotation marks omitted); see also Berkla, 302 F.3d at 924 ("[F]rivolousness was appropriately treated as one among many considerations in denying fees.").

In light of the education SOFA received as the plaintiff in Elvis Presley Enterprises, SOFA should have known from the outset that its chances of success in this case were slim to none. Moreover, we agree with the district court that "lawsuits of this nature ... have a chilling effect on creativity insofar as they discourage the fair use of existing works in the creation of new ones." The fair use doctrine is an integral part of copyright law precisely because it gives authors "breathing space within the confines of copyright" to build upon their predecessors' works. Campbell, 510 U.S. at 579, 114 S.Ct. 1164. When a fee award encourages a defendant to litigate a meritorious fair use claim against an unreasonable claim of infringement, the policies of the Copyright Act are served. Fogerty, 510 U.S. at 527, 114 S.Ct. 1023. Therefore, we conclude that [1281] the district court's award of attorney fees to Dodger was justified.

AFFIRMED.

126 F.3d 70 (1997)

[71] Barbara Hoffman, New York City, for Plaintiff-Appellant.

Kim J. Landsman, New York City (David M. Levin, Patterson, Belknap, Webb & Tyler, New York City, on the brief), for Defendants-Appellees.

(Dorothy M. Weber, Judith A. Kaminsky, Shukat Arrow Hafer & Weber, New York City; Michael D. Remer, Cowan, DeBaets, Abraham & Sheppard, New York City, submitted brief for amici curiae The Artists Rights Society, Inc. and The Picasso Administration).

Before: MESKILL and NEWMAN, Circuit Judges, and McAVOY,^[1] Chief District Judge.

JON O. NEWMAN, Circuit Judge:

This appeal primarily concerns the scope of copyright protection for a poster of an artistic work that was used as set decoration for a television program. Faith Ringgold appeals from the September 24, 1996, judgment of the District Court for the Southern District of New York (John S. Martin, Jr., Judge) dismissing, on motion for summary judgment, her copyright infringement suit against Black Entertainment Television, Inc. ("BET") and Home Box Office, Inc. ("HBO"). The District Court sustained defendants' defense [72] of fair use. We conclude that summary judgment was not warranted, and we therefore reverse and remand for further consideration of plaintiff's claim.

Background

1. The copyrighted work. Faith Ringgold is a successful contemporary artist who created, and owns the copyright in, a work of art entitled "Church Picnic Story Quilt" (sometimes hereafter called "Church Picnic" or "the story quilt").^[2] "Church Picnic" is an example of a new form of artistic expression that Ringgold has created. She calls the form a "story quilt design." These designs consist of a painting, a handwritten text, and quilting fabric, all three of which Ringgold unites to communicate parables. The painting is a silk screen on silk quilt. "Church Picnic" is an example of this unusual art form, conveying aspects of the African-American experience in the early 1900's. The painting component of the work depicts a Sunday school picnic held by the Freedom Baptist Church in Atlanta, Georgia, in 1909. Above and below the painting are twelve numbered panels containing a text written in the idiomatic African-American dialect of the era.

The text relates the thoughts of a parishioner who attended the picnic and is waiting to tell her daughter about it when the daughter comes home. The parishioner's daughter is in love with the church pastor, but, as depicted in the painting, the pastor is in love with another woman, and he soon will ask that other woman to marry him. Because the young woman was born out-of-wedlock, the pastor's "high-brow" family is dismayed by the prospect of the imminent engagement. Surrounding the text and painting is a quilted border, consisting of multi-colored triangular shapes of fabric. The very edge of the work is finished with a thin red welt.

Although Ringgold has retained all rights in the copyright in "Church Picnic," the work itself is owned by the High Museum of Art (the "High Museum") in Atlanta, Georgia. Since 1988 the High Museum has held a nonexclusive license to reproduce "Church Picnic" as a poster ("`Church Picnic' poster" or "the poster"), and to sell those reproductions. The "Church Picnic" poster sells for $20.00 a copy and was not produced as a limited edition. Thousands of copies of the poster have been sold since 1988. Although the license to reproduce poster copies of "Church Picnic" has terminated, copies of the poster remain available for sale.

Below the portion of the poster that displays "Church Picnic" are several identifying words. "High Museum of Art" appears in letters 1 1/4 inches high. Below these words is the phrase "Faith Ringgold, Church Picnic Story Quilt, 1988, gift of Don and Jill Childress" in letters 1/8 inch high. Below this line, in smaller type, appears "Courtesy Bernice Steinbaum Galley, New York City. Poster 1988 High Museum of Art, Atlanta."

2. The alleged infringing use. HBO Independent Productions, a division of HBO, produced "ROC," a television "sitcom" series concerning a middle-class African-American family living in Baltimore. Some time prior to 1992, HBO Independent Productions produced an episode of ROC in which a "Church Picnic" poster, presumably sold by the High Museum, was used as part of the set decoration.

The title character of "ROC" lives with his wife, Eleanor, his adult brother, Joey, and his father. In the episode in question, Roc pressures Joey, a jazz trumpeter, into giving trumpet lessons to some children in the church congregation, so that Joey, a perpetually unemployed gambler, can earn money to repay a debt he owes to Roc. After the children have taken some lessons, the minister of the church suggests that they give a recital in the newly-remodeled church hall. A five-minute scene of the recital concludes the episode. The "Church Picnic" poster was used as a wall-hanging in the church hall.

[73] As the church audience waits to hear the recital, Roc and Eleanor are standing in the background of the scene, next to the audience and slightly to the left of the poster. The minister is also standing in the background, slightly to the right of the poster. The children play very poorly, and it is evident to Roc and Eleanor that Joey has not taught them anything. The scene and the episode conclude with parents of some of the children thanking Joey for the lessons, each set of parents believing that their child played on key but was drowned out by the other children.

In the scene, at least a portion of the poster is shown a total of nine times. In some of those instances, the poster is at the center of the screen, although nothing in the dialogue, action, or camera work particularly calls the viewer's attention to the poster. The nine sequences in which a portion of the poster is visible range in duration from 1.86 to 4.16 seconds. The aggregate duration of all nine sequences is 26.75 seconds. We describe these sequences in more detail below.

The copy of the poster used in the episode was framed without the identifying wording that appears beneath the artwork. As framed, the poster includes a notice of copyright, but the type is too small to be discernible to a television viewer.

A broadcast television network first televised the episode in 1992, and in October 1994 BET aired the episode for the first time on cable television. In January 1995, Ringgold happened to watch the episode on BET (apparently a repeat showing), and at that time became aware of the defendants' use of the poster as part of the set decoration.

3. District Court proceedings. Ringgold sued the defendants, alleging infringement of her copyright in "Church Picnic Story Quilt," in violation of 17 U.S.C. § 106 (1994), because of the unauthorized use of the poster as part of the set decoration for the episode of "ROC." The complaint also alleged common law unfair competition and a violation of New York's statute protecting artistic authorship rights. See N.Y. Arts & Cult. Aff. Law § 14.03 (McKinney Supp.1995).

Prior to discovery, the defendants moved for summary judgment, contending (i) that they were not liable for copyright infringement, because their use of the story quilt was either de minimis or a fair use, (ii) that the unfair competition claim was preempted by the Copyright Act, and (iii) that either (a) the plaintiff had not stated a claim under the Artists' Authorship Rights Law, or (b) the Court should decline to exercise supplemental jurisdiction over that state law claim. Ringgold cross-moved for a preliminary injunction to prevent further displays of her art in the sitcom episode.

The District Court denied the plaintiff's motion for a preliminary injunction, granted defendants' motion for summary judgment, and dismissed the complaint. Apparently accepting, or at least assuming, that the plaintiff had sufficiently alleged a claim of copyright infringement, Judge Martin rejected her infringement claim on the ground that undisputed facts established the defendants' fair use defense. He then dismissed her unfair competition claim on the ground of preemption, which she did not dispute, and declined to exercise supplemental jurisdiction over her remaining state law claim.

Discussion

The Copyright Act grants certain exclusive rights to the owner of a copyright, see 17 U.S.C. § 106 (1994), including the right to make and distribute copies and derivative works based on the copyrighted work, and the right to display the copyrighted work publicly, id. § 106(1)-(3), (5). In the absence of defenses, these exclusive rights normally give a copyright owner the right to seek royalties from others who wish to use the copyrighted work. See American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 929 (2d Cir.1994, as amended, July 17, 1995) ("American Geophysical"); see also DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d 24, 28 (2d Cir.1982) (noting that one benefit of owning a copyright is the right to license its use for a fee). Ringgold contends that the defendants violated this licensing right by using the "Church Picnic" poster to decorate the set of their sitcom without her authorization.

[74] The caselaw provides little illumination concerning claims that copyright in a visual work has been infringed by including it within another visual work. Compare Woods v. Universal City Studios, Inc., 920 F.Supp. 62 (S.D.N.Y.1996) (film infringed architectural drawing), with Monster Communications, Inc. v. Turner Broadcasting System, Inc., 935 F.Supp. 490 (S.D.N.Y.1996) (preliminary injunction denied to bar showing of film that included copyrighted film clips). The Nimmer treatise posits the problem of a motion picture in which an actor is reading a magazine of which the cover picture is observable, and acknowledges that "[t]he answer is by no means certain." See 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[D][3], at 13-229 (1997) ("Nimmer"). The treatise observes, with uncharacteristic ambivalence, that a fair use defense might be supported on the ground that "the entire work does not supplant the function of the plaintiff's work," yet also points out that "ordinarily" the copying of a magazine cover into another medium "will constitute infringement, and not fair use." Id.

HBO and BET defend their use of the poster on two separate, though related grounds: (a) that their use of the poster was de minimis, and (b) that, as Judge Martin ruled, their use of the poster was a permissible "fair use," see 17 U.S.C. § 107.

I. De minimis

A. The de minimis Concept in Copyright Law

The legal maxim "de minimis non curat lex" (sometimes rendered, "the law does not concern itself with trifles") insulates from liability those who cause insignificant violations of the rights of others. In the context of copyright law, the concept of de minimis has significance in three respects, which, though related, should be considered separately.

First, de minimis in the copyright context can mean what it means in most legal contexts: a technical violation of a right so trivial that the law will not impose legal consequences. Understandably, fact patterns are rarely litigated illustrating this use of the phrase, for, as Judge Leval has observed, such circumstances would usually involve "[q]uestions that never need to be answered." Pierre N. Leval, Nimmer Lecture: Fair Use Rescued, 44 U.C.L.A. L.Rev. 1449, 1457 (1997). He offers the example of a New Yorker cartoon put up on a refrigerator.^[3] In Knickerbocker Toy Co. v. Azrak-Hamway International, Inc., 668 F.2d 699, 703 (2d Cir.1982), we relied on the de minimis doctrine to reject a toy manufacturer's claim based on a photograph of its product in an office copy of a display card of a competitor's product where the display card was never used. See id. at 702.

Second, de minimis can mean that copying has occurred to such a trivial extent as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying. See Nimmer § 13.03[A], at 13-27. In applying the maxim for this purpose, care must be taken to recognize that the concept of "substantial similarity" itself has unfortunately been used to mean two different things. On the one hand, it has been used as the threshold to determine the degree of similarity that suffices, once access has been shown, as indirect proof of copying; on the other hand, "substantial similarity" is more properly used, after the fact of copying has been established, as the threshold for determining that the degree of similarity suffices to demonstrate actionable infringement. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-40 (2d Cir.1992); Nimmer § 13.01[B]. Professor Latman helpfully suggested that when "substantial similarity" is used to mean the threshold for copying as a factual matter, the better term is "probative similarity," and that "substantial similarity" should mean only the threshold for actionable copying. See Alan Latman, "Probative Similarity" as [75] Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90 Colum. L.Rev. 1187, 1204 (1990). The Nimmer treatise endorses and has implemented the Latman taxonomy, see Nimmer § 13.01[B], at 13-12, & n. 31.1, as has this Court, see Laureyssens, 964 F.2d at 140.

In the pending case, there is no dispute about copying as a factual matter: the "Church Picnic" poster itself, not some poster that was similar in some respects to it, was displayed on the set of defendants' television program. What defendants dispute when they assert that their use of the poster was de minimis is whether the admitted copying occurred to an extent sufficient to constitute actionable copying, i.e., infringement. That requires "substantial similarity" in the sense of actionable copying, and it is that sense of the phrase to which the concept of de minimis is relevant.

At first glance, it might seem odd to pursue an inquiry as to "substantial similarity" even after copying as a factual matter has been established. However, the superficial anomaly reflects only a lack of appreciation of the difference between factual copying and actionable copying. The former (probative similarity) requires only the fact that the infringing work copies something from the copyrighted work; the latter (substantial similarity) requires that the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred. The qualitative component concerns the copying of expression, rather than ideas, a distinction that often turns on the level of abstraction at which the works are compared. See Nimmer § 13.03[A][1]. The quantitative component generally concerns the amount of the copyrighted work that is copied, a consideration that is especially pertinent to exact copying, see Nimmer § 13.03[A][2].^[4] In cases involving visual works, like the pending one, the quantitative component of substantial similarity also concerns the observability of the copied work — the length of time the copied work is observable in the allegedly infringing work and such factors as focus, lighting, camera angles, and prominence. Thus, as in this case, a copyrighted work might be copied as a factual matter, yet a serious dispute might remain as to whether the copying that occurred was actionable. Since "substantial similarity," properly understood, includes a quantitative component, it becomes apparent why the concept of de minimis is relevant to a defendant's contention that an indisputably copied work has not been infringed. See id. at 13-46 & n. 92.2.

Third, de minimis might be considered relevant to the defense of fair use. One of the statutory factors to be assessed in making the fair use determination is "the amount and substantiality of the portion used in relation to the copyrighted work as a whole," 17 U.S.C. § 107(3) (emphasis added). A defendant might contend, as the District Court concluded in this case, that the portion used was minimal and the use was so brief and indistinct as to tip the third fair use factor decisively against the plaintiff.^[5]

Though the concept of de minimis is useful in insulating trivial types of copying from liability (the photocopied cartoon on the refrigerator) and in marking the quantitative threshold for actionable copying, see, e.g., Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255, 267 (5th Cir.1988) (30 characters out of 50 pages of source code held de minimis), the concept is an inappropriate one to [76] be enlisted in fair use analysis. The third fair use factor concerns a quantitative continuum. Like all the fair use factors, it has no precise threshold below which the factor is accorded decisive significance. If the amount copied is very slight in relation to the work as a whole, the third factor might strongly favor the alleged infringer, but that will not always be the case. See, e.g., Iowa State University Research Foundation, Inc. v. American Broadcasting Companies, Inc., 621 F.2d 57, 59, 61-62 (2d Cir.1980) (television program's copying of portions of copyrighted film, including an eight second segment). More important, the fair use defense involves a careful examination of many factors, often confronting courts with a perplexing task. If the allegedly infringing work makes such a quantitatively insubstantial use of the copyrighted work as to fall below the threshold required for actionable copying, it makes more sense to reject the claim on that basis and find no infringement, rather than undertake an elaborate fair use analysis in order to uphold a defense.

B. The de minimis Concept Applied to Defendants' Copying

Defendants contend that the nine instances in their television program in which portions of the poster were visible, individually and in the aggregate, were de minimis, in the sense that the quantity of copying (or at least the quantity of observable copying) was below the threshold of actionable copying. The parties appear to agree on the durational aspects of the copying. The segments of the program in which the poster was visible to any degree lasted between 1.86 and 4.16 seconds. The aggregate duration of all nine segments was 26.75 seconds.

The parties differ, at least in emphasis, as to the observability of what was copied. Our own inspection of a tape of the program reveals that some aspects of observability are not fairly in dispute. In the longest segment, between 4 and 5 seconds, nearly all of the poster, at least 80 percent, is visible. The camera is positioned to the right of about eight members of the audience seated on the left side of the center aisle (facing the stage), and the poster is on the wall immediately to the left of the end of the rows of two or three spectators. The minister stands to the right of the poster, partially obscuring the lower right quadrant, and a member of the audience stands to the left, partially obscuring the lower left quadrant. Roc and his wife stand farther to the left of the poster. The very top edge of the poster is not within the camera's "framing" of the scene. Since the camera focuses precisely on the members of the audience, the poster, hung to their left, is not in perfect focus, but it is so close to them that the poster is plainly observable, even though not in exact focus.^[6] An observer can see that what is hung is some form of artwork, depicting a group of African-American adults and children with a pond in the background. The brevity of the segment and the lack of perfect focus preclude identification of the details of the work, but the two-dimensional aspect of the figures and the bold colors are seen in sufficient clarity to suggest a work somewhat in the style of Grandma Moses. Only the painting portion of the poster is observable; the text material and the bordering quilting cannot be discerned.

All the other segments are of lesser duration and/or contain smaller and less distinct portions of the poster.^[7] However, their repetitive [77] effect somewhat reenforces the visual effect of the observable four-to-five-second segment just described.

A helpful analogy in determining whether the purpose and duration of the segments should be regarded as de minimis is the regulation issued by the Librarian of Congress providing for royalties to be paid by public broadcasting entities for the use of published pictorial and visual works. See 37 C.F.R. § 253.8 (1996) (implementing 17 U.S.C. § 118(b)). The Librarian appoints the Register of Copyrights, who serves as the director of the Copyright Office. See 17 U.S.C. § 701. The Librarian's regulation distinguishes between a "featured" and a "background" display, setting a higher royalty rate for the former. Id. § 253.8(b)(1)(i)(A), (B). Obviously the Librarian has concluded that use of a copyrighted visual work even as "background" in a television program normally requires payment of a license fee. Moreover, the Librarian has defined a "featured" display as "a full-screen or substantially full screen display for more than three seconds," id. § 253.8(b)(2), and a "background" display as "[a]ny display less than full-screen or substantially full-screen, or full-screen for three seconds or less," id. If defendants' program were to be shown on public television, plaintiff would appear to be entitled to a "background" license fee for a "less than full-screen" display.

From the standpoint of a quantitative assessment of the segments, the principal four-to-five-second segment in which almost all of the poster is clearly visible, albeit in less than perfect focus, reenforced by the briefer segments in which smaller portions are visible, all totaling 26 to 27 seconds, are not de minimis copying.

Defendants further contend that the segments showing any portion of the poster are de minimis from the standpoint of qualitative sufficiency and therefore not actionable copying because no protectable aspects of plaintiff's expression are discernible. In defendants' view, the television viewer sees no more than "some vague stylized [sic] painting that includes black people," Brief for Appellees at 18, and can discern none of Ringgold's particular expression of her subjects. That is about like saying that a videotape of the Mona Lisa shows only a painting of a woman with a wry smile. Indeed, it seems disingenuous for the defendant HBO, whose production staff evidently thought that the poster was well suited as a set decoration for the African-American church scene of a ROC episode, now to contend that no visually significant aspect of the poster is discernible. In some circumstances, a visual work, though selected by production staff for thematic relevance, or at least for its decorative value, might ultimately be filmed at such a distance and so out of focus that a typical program viewer would not discern any decorative effect that the work of art contributes to the set. But that is not this case. The painting component of the poster is recognizable as a painting, and with sufficient observable detail for the "average lay observer," see Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992) (internal quotation omitted), to discern African-Americans in Ringgold's colorful, virtually two-dimensional style. The de minimis threshold for actionable copying of protected expression has been crossed.^[8]

II. Fair Use

The District Court upheld the defendants' fair use defense after considering the four non-exclusive factors identified in 17 U.S.C. § 107. It relied primarily on two district court opinions, Amsinck v. Columbia Pictures Industries, Inc., 862 F.Supp. 1044 (S.D.N.Y.1994), and Mura v. Columbia Broadcasting System, Inc., 245 F.Supp. 587 (S.D.N.Y.1965).^[9] Concerning the first factor [78] — purpose and character of the use — the Court acknowledged that defendants' use was commercial, but thought this circumstance was "undercut" by the fact that the defendants did not use the poster to encourage viewers to watch the ROC episode and did not try to "exploit" Ringgold's work. Ringgold v. Black Entertainment Television, No. 96 Civ. 0290, 1996 WL 535547, *3 (S.D.N.Y. Sept. 19, 1996). The Court acknowledged that the second factor — nature of the copyrighted work — favored Ringgold in view of the imaginative nature of her artwork.

The Court considered the third factor — amount and substantiality of the portion used in relation to the entire work — to favor the defendants because the segments of the program in which the poster is visible are brief, in some only a portion is seen, and in those showing nearly all the poster, it is not in exact focus.

The Court considered the fourth factor — effect of the use upon the potential market for the work — also to favor the defendants. Noting that the television episode cannot be considered a substitute for the poster, Judge Martin predicted "little likelihood" of any adverse impact on poster sales. Id., 1996 WL 535547 at *4. In addition, he observed that Ringgold did not claim that her ability to license the poster "has been negatively impacted by the defendants' use in the four years" since the episode was aired. Id. Concluding that defendants' use "had little or no effect on Ringgold's potential market for her work," id., he granted summary judgment in their favor, sustaining their fair use defense.

In reviewing the grant of summary judgment, we note preliminarily that the District Court gave no explicit consideration to whether the defendants' use was within any of the categories that the preamble to section 107 identifies as illustrative of a fair use, or even whether it was similar to such categories. Though the listed categories — criticism, comment, news reporting, teaching, scholarship, and research, see 17 U.S.C. § 107 — have an "`illustrative and not limitative'" function, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 114 S.Ct. 1164, 1170, 127 L.Ed.2d 500 (1994) (quoting 17 U.S.C. § 101),^[10] and the four factors should be considered even if a challenged use is not within any of these categories, see Pacific and Southern Co. v. Duncan, 744 F.2d 1490, 1495 (11th Cir.1984), the illustrative nature of the categories should not be ignored. As the Supreme Court's recent and significant fair use opinion in Campbell observes, "The enquiry [concerning the first fair use factor] may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like...." Campbell, 510 U.S. at 578-79, 114 S.Ct. at 1171.

1. First factor. Considering the first fair use factor with the preamble illustrations as a "guide[]," id., we observe that the defendants' use of Ringgold's work to decorate the set for their television episode is not remotely similar to any of the listed categories. In no sense is the defendants' use "`transformative,'" id. at 579, 114 S.Ct. at 1171 (quoting Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1111 (1990)). In Campbell, Justice Souter explained a [79] "transformative" use that would tip the first factor toward a defendant:

The central purpose of this investigation is to see, in Justice Story's words, whether the new work merely "supersede[s] the objects" of the original creation, Folsom v. Marsh, [9 F. Cas. 342, 348 (C.C.Mass.1841) (No. 4,901)]; accord, Harper & Row, [Publishers, Inc. v. Nation Enterprises], 471 U.S. [539, 562, 105 S.Ct. 2218, 2231-32, 85 L.Ed.2d 588 (1985)] ("supplanting" the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message....

510 U.S. at 579, 114 S.Ct. at 1171.

The defendants have used Ringgold's work for precisely a central purpose for which it was created — to be decorative.^[11] Even if the thematic significance of the poster and its relevance to the ROC episode are not discernible, the decorative effect is plainly evident. Indeed, the poster is the only decorative artwork visible in the church hall scene. Nothing that the defendants have done with the poster "supplant[s]" the original or "adds something new." The defendants have used the poster to decorate their set to make it more attractive to television viewers precisely as a poster purchaser would use it to decorate a home.

In considering whether a visual work has been "supplant[ed]" by its use in a movie or a television program, care must be taken not to draw too close an analogy to copying of written works. When all or a substantial portion of text that contains protectable expression is included in another work, solely to convey the original text to the reader without adding any comment or criticism, the second work may be said to have supplanted the original because a reader of the second work has little reason to buy a copy of the original. Although some books and other writings are profitably reread, their basic market is the one-time reader. By contrast, visual works are created, and sold or licensed, usually for repetitive viewing. Thus, the fact that the episode of ROC does not supplant the need or desire of a television viewer to see and appreciate the poster (or the original) again and again does not mean that the defendants' use is of a "purpose and character" that favors fair use. Indeed, unauthorized displays of a visual work might often increase viewers' desire to see the work again. Nevertheless, where, as here, the purpose of the challenged use is, at a minimum, the same decorative purpose for which the poster is sold, the defendants' use has indeed "superseded the objects" of the original, see Folsom, 9 F. Cas. at 348 (emphasis added), and does not favor fair use. Of course, no one would buy a videotape of the ROC episode as a substitute for the poster, but the challenged use need not supplant the original itself, only, as Justice Story said, the "objects" of the original.

It is not difficult to imagine a television program that uses a copyrighted visual work for a purpose that heavily favors fair use. If a TV news program produced a feature on Faith Ringgold and included camera shots of her story quilts, the case for a fair use defense would be extremely strong.^[12] The same would be true of a news feature on the High Museum that included a shot of "Church Picnic." See Italian Book Corp. v. American Broadcasting Cos., 458 F.Supp. 65 (S.D.N.Y.1978) (fair use defense upheld for TV newscast of street festival that included copyrighted song).^[13] However, it must be [80] 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.

The District Court's consideration of the first fair use factor was legally flawed in its failure to assess the decorative purpose for which defendants used the plaintiff's work. Instead, the Court tipped the first factor against the plaintiff because the presence of the poster was "incidental" to the scene and the defendants did not use the poster to encourage viewers to watch the ROC episode. The first point could be said of virtually all set decorations, thereby expanding fair use to permit wholesale appropriation of copyrighted art for movies and television. The second point uses a test that makes it far too easy for a defendant to invoke the fair use defense.^[14]

2. Second factor. The District Court accepted the plaintiff's contention that the second fair use factor weighs in her favor because of the creative nature of her work.

3. Third factor. Though we have earlier noted that the de minimis concept is inappropriate for a fair use analysis, since a copying that is de minimis incurs no liability, without the need for an elaborate fair use inquiry, the third fair use factor obliges a court to consider the amount and substantiality of the portion used, whenever that portion crosses the de minimis threshold for actionable copying. The District Court properly considered the brevity of the intervals in which the poster was observable and the fact that in some segments only a portion of the poster and the nearly full view was not in precise focus.^[15] Our own viewing of the episode would incline us to weight the third factor less strongly toward the defendants than did Judge Martin, but we are not the fact-finders, and the fact-finding pertinent to each fair use factor, under proper legal standards, is for the District Court, although the ultimate conclusion is a mixed question of law and fact, Harper & Row, 471 U.S. at 560, 105 S.Ct. at 2230, subject to de novo review, New Era Publications International, ApS v. Carol Publishing Group, 904 F.2d 152, 155 (2d Cir.1990).

Even if the third factor favors the defendants, courts considering the fair use defense in the context of visual works copied or displayed in other visual works must be careful not to permit this factor too easily to tip the aggregate fair use assessment in favor of those whom the other three factors do not favor. Otherwise, a defendant who uses a creative work in a way that does not serve any of the purposes for which the fair use defense is normally invoked and that impairs the market for licensing the work will escape liability simply by claiming only a small infringement.

4. Fourth factor. The fourth fair use factor is "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4) (emphasis added). "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 [81] U.S. at 590, 114 S.Ct. at 1177 (quoting Nimmer § 13.05[A][4] (at 13-187 in 1997 edition)). Ringgold contends that there is a potential market for licensing her story quilts, Complaint ¶ 17, and stated in an affidavit that in 1995 she earned $31,500 from licensing her various artworks and that she is often asked to license her work for films and television. Affidavit of Faith Ringgold ¶¶ 13, 14. Specifically, she avers that in 1992 she was asked to license use of the "Church Picnic" poster by the producers of another TV sitcom and declined because of an inadequate price and inadequate artist's credit. Id. ¶ 15.

We have recognized the danger of circularity in considering whether the loss of potential licensing revenue should weight the fourth factor in favor of a plaintiff. See American Geophysical, at 929 n. 17, 931. Since the issue is whether the copying should be compensable, the failure to receive licensing revenue cannot be determinative in the plaintiff's favor. See id. at 931. We have endeavored to avoid the vice of circularity by considering "only traditional, reasonable, or likely to be developed markets" when considering a challenged use upon a potential market. See id. at 930; Nimmer § 13.05[A][4], at 13-189. Ringgold's affidavit clearly raises a triable issue of fact concerning a market for licensing her work as set decoration. She is not alleging simply loss of the revenue she would have earned from a compensated copying; she is alleging an "exploitation of the copyrighted material without paying the customary price." See Harper & Row, 471 U.S. at 562, 105 S.Ct. at 2231 (emphasis added).^[16]

The District Court's assessment of the fourth factor in favor of the defendants was legally flawed. The Court relied primarily on the fact that the ROC episode had little likelihood of adversely affecting poster sales and that Ringgold had not claimed that her ability to license the poster had been "negatively impacted." 1996 WL 535547, at *4. The first consideration deserves little weight against a plaintiff alleging appropriation without payment of a customary licensing fee.^[17] The second consideration confuses lack of one item of specific damages with lack of adverse impact on a potential market. See Nimmer § 13.05[A][4], at 13-187. Ringgold is not required to show a decline in the number of licensing requests for the "Church Picnic" poster since the ROC episode was aired. The fourth factor will favor her if she can show a "traditional, reasonable, or likely to be developed" market for licensing her work as set decoration. Certainly "unrestricted and widespread conduct of the sort engaged in by the defendant[s] ... would result in substantially adverse impact on the potential market for [licensing of] the original." Campbell, 510 U.S. at 590, 114 S.Ct. at 1177 (internal quotation omitted). Particularly in view of what Ringgold has averred and is prepared to prove, the record on the fourth fair use factor is inadequate to permit summary judgment for the defendants. See id. at 593-94, 114 S.Ct. at 1178-79.

Conclusion

For all of these reasons, plaintiff's copyright infringement claim must be returned to the District Court to afford an opportunity for further development of the record and a sensitive aggregate assessment by the factfinder of the fair use factors in light of the applicable legal principles. Upon remand, the Court should give renewed consideration to plaintiff's claim under the New York Artists' Authorship Rights Act.^[18] However, because [82] Ringgold has not challenged the dismissal of her preempted unfair competition claim, we affirm the District Court's dismissal of that claim.

The judgment of the District Court is reversed, and the case is remanded.

[1] Honorable Thomas J. McAvoy, of the United States District Court for the Northern District of New York, sitting by designation.

[2] Ringgold's affidavit calls the work "Church Picnic." Affidavit of Faith Ringgold ¶ 3. Her complaint calls it "Church Picture Quilt." Complaint ¶ 7. Her brief calls it "The Church Picnic Story Quilt." Brief for Appellant at 7. The certificate of copyright registration calls it "Church Picnic Story Quilt." Joint Appendix at A-77. We will use either the title in the artist's own affidavit or "the story quilt," meaning the particular example of the generic form of work.

[3] Presumably, Judge Leval has in mind the posting of a photocopy of the cartoon; photocopying the cartoon, if not insulated by the doctrine of de minimis, or subject to some recognized defense, might violate the copyright proprietor's right to reproduce a copy of the work, see 17 U.S.C. § 106(1), though if the original page of the magazine was posted, the work would not have been "display[ed] ... publicly," id. § 106(5).

[4] The Nimmer treatise helpfully refers to exact copying of a portion of a work as "fragmented literal similarity," see Nimmer, § 13.03[A][2], in contrast to "comprehensive nonliteral similarity," which refers to an alleged copy that is qualitatively but not exactly similar to a copyrighted work, id. § 13.03[A][1]. We have endorsed that taxonomy. See Twin Peaks Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366, 1372 n. 1 (2d Cir.1993); Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1073 (2d Cir.1992).

[5] Whether a use of a copyrighted work that surpasses the de minimis threshold of "substantial similarity" for purposes of actionable copying can nevertheless be de minimis for purposes of the third fair use factor is an inquiry in the class of angelic terpsichore on heads of pins. Perhaps that is why the Supreme Court has quoted approvingly Professor Latman's reference to "the partial marriage between the doctrine of fair use and the legal maxim de minimis non curat lex." See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 451 n. 34, 104 S.Ct. 774, 793 n. 34, 78 L.Ed.2d 574 (1984).

[6] The focus is such that the eight seated members of the audience who are visible and the four people standing along the wall to their left are all in clear focus. The poster is on the wall between two of these four people.

[7] The segments are: (1) a long, wide-angle shot of the audience and a performer on the stage, with the full poster too indistinct for anything of significance to be discerned (between two and three seconds); (2) a full view of almost the entire poster, as observable as the segment described in the text, with the lower right and lower left portions partially obscured as Joey walks up the aisle (2 to 3 seconds); (3) a close-up view of the right half of the poster, with the lower right portion partially obscured by the minister, who is standing next to the poster and on whom the camera focuses (1 to 2 seconds); (4) the segment described in the text (4 to 5 seconds); (5) similar to segment (3) (3 to 4 seconds); (6) a view of the lower right quadrant, partially obscured by a person (3 to 4 seconds); (7) similar to segment (6) (3 to 4 seconds); (8) similar to segment (6) (2 to 3 seconds); (9) similar to segment (6) (1 to 2 seconds).

[8] The District Court implicitly reached this same conclusion since it grounded its ruling on the fair use defense, a defense that would be reached only if the threshold of actionable copying had been crossed.

[9] Whether or not the cases relied on by the District Court were correctly decided, a matter we need not determine, they are distinguishable in important respects. First, both Mura and Amsinck held that televising or filming the copyrighted items (hand puppets and a teddy bear mobile, respectively) did not constitute making a copy. However, Mura was decided before the 1976 Act afforded copyright proprietors a display right, see 17 U.S.C. § 106(5), and Amsinck, though decided under the 1976 Act, did not consider a display right. Second, both decisions discussed the fair use defense as dictum, after finding lack of copying. See Mura, 245 F.Supp. at 590; Amsinck, 862 F.Supp. at 1048 ("defendants might still be entitled to a fair use defense"). Third, at least in Mura, the puppets were used functionally and for a somewhat educational purpose in the Captain Kangaroo television program. By contrast, Ringgold's work was used by defendants for precisely the decorative purpose that was a principal reason why she created it. Finally, both decisions regarded the fourth fair use factor as of primary importance and weighted the factor heavily against the plaintiffs. However, the erstwhile primacy of the fourth factor, see, e.g., Harper & Row, 471 U.S. at 566, 105 S.Ct. at 2233-34, has been considerably modulated by the requirement announced by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), that "[a]ll [four factors] are to be explored, and the results weighed together, in light of the purposes of copyright," id. at 578, 114 S.Ct. at 1171, and we have recently recognized the existence of a licensing market as relevant to the fourth factor analysis, see American Geophysical, 60 F.3d at 929-31.

[10] Section 107 states that a fair use for purposes "such as" the six listed categories is not an infringement, and section 101 states that "[t]he terms `including' and `such as' are illustrative and not limitative." 17 U.S.C. §§ 101, 107.

[11] Of course, the creation of visual works serves other, often more important, purposes such as illuminating human understanding, providing inspiration, or provoking thought. Ringgold's work, in telling and illustrating an informative story, might well serve these purposes, but it also significantly serves a decorative purpose.

[12] We hesitate to say "conclusive" because even existing technological advances, much less those in the future, create extraordinary possibilities. For example, if the news program included a direct shot of an entire story quilt (whether original or poster reproduction), well lit and in clear focus, a viewer so inclined could tape the newscast at home, scan the tape, and with digital photographic technology, produce a full size copy of the original, thereby securing an attractive "poster"-like wall-hanging without paying the $20 poster fee. A news program that recommended this technique would be a weak candidate for fair use.

[13] The Patry treatise on fair use suggests that this case is better grounded, not on fair use, but as an example of "excused innocent infringement." See William F. Patry, The Fair Use Privilege in Copyright Law 484 (2d ed.1995). Perhaps the author prefers to defeat such claims on the threshold ground that no actionable infringement occurred, rather than subject the news-gathering defendant to the vagaries of the fair use defense.

[14] To the extent that the defendants' good faith is relevant, see Rogers, 960 F.2d at 309, the fact-finder is entitled to consider that someone, likely a member of BET's production staff, cropped the poster before framing it so as to omit the legend identifying the poster with the High Museum. An available inference is that the production staff, if responsible, wanted the viewers to believe that the set was decorated with an original painting, rather than a poster reproduction.

[15] At trial, plaintiff will be entitled to show the fact-finder the master tape that was used to air the ROC episode, thereby avoiding whatever lack of focus is attributable from the inevitable degradation that occurred in making the videotape copies submitted to the District Court and to this Court.

[16] The amicus curiae brief for the Artists Rights Society, Inc. and the Picasso Administration strongly indicates evidence of licensing of artistic works for film and television set decoration, evidence that plaintiff is entitled to present at trial.

[17] Even if the unauthorized use of plaintiff's work in the televised program might increase poster sales, that would not preclude her entitlement to a licensing fee. See DC Comics, 696 F.2d at 28.

[18] The New York Artists' Authorship Rights Act provides as follows:

1. [N]o person other than the artist or a person acting with the artist's consent shall knowingly display in a place accessible to the public or publish a work of fine art or limited edition multiple of not more than three hundred copies by that artist or a reproduction thereof in an altered, defaced, mutilated or modified form if the work is displayed, published or reproduced as being the work of the artist, or under circumstances under which it would reasonably be regarded as being the work of the artist, and damage to the artist's reputation is reasonably likely to result therefrom. ...

2.(a) [T]he artist shall retain at all times the right to claim authorship, or, for just and valid reason, to disclaim authorship of such work. The right to claim authorship shall include the right of the artist to have his or her name appear on or in connection with such work as the artist.

....

4.(a) An artist aggrieved under subdivision one or subdivision two of this section shall have a cause of action for legal and injunctive relief.

N.Y. Arts & Cult. Aff. Law § 14.03 (McKinney Supp.1995). Ringgold claims that the defendants violated her statutory rights because they did not credit her as the creator of the story quilt. Though the defendants argued on various grounds that the statute does not apply to the facts alleged, the District Judge decided not to exercise supplemental jurisdiction over the claim. By our remand, we express no view as to the merits of this claim or of defendants' defenses.

572 F.Supp.2d 1150

Stephanie LENZ, Plaintiff,
v.
UNIVERSAL MUSIC CORP., Universal Music Publishing, Inc., and Universal Music Publishing Group, Defendants.

Case No. C 07-3783 JF.

United States District Court, N.D. California, San Jose Division.

August 20, 2008. 

[1151] Corynne McSherry, Jason M. Schultz, Marcia Clare Hofmann, Michael Soonuk Kwun, Electronic Frontier Foundation, San Francisco, CA, for Plaintiff.

Kelly Max Klaus, Amy C. Tovar, Munger Tolles & Olson LLP, Los Angeles, CA, for Defendants.

JEREMY FOGEL, District Judge.

Defendants Universal Music Corp., Universal Music Publishing, Inc., and Universal Music Publishing Group (collectively, "Universal") move to dismiss the instant case for failure to state a claim upon which relief may be granted. See Fed.R.Civ.P. 12(b)(6). The Court has read the moving papers and has considered the oral arguments of counsel. For the reasons set forth below, the motion will be DENIED.

I. BACKGROUND

On February 7, 2007, Plaintiff Stephanie Lenz ("Lenz") videotaped her young children [1152] dancing in her family's kitchen. The song "Let's Go Crazy" by the artist professionally known as Prince ("Prince") played in the background. The video is twentynine seconds in length, and "Let's Go Crazy" can be heard for approximately twenty seconds, albeit with difficulty given the poor sound quality of the video. The audible portion of the song includes the lyrics, "C'mon baby let's get nuts" and the song's distinctive guitar solo. Lenz is heard asking her son, "what do you think of the music?" On February 8, 2007, Lenz titled the video "Let's Go Crazy # 1" and uploaded it to YouTube.com ("YouTube"), a popular Internet video hosting site, for the alleged purpose of sharing her son's dancing with friends and family.^[1] YouTube provides "video sharing" or "user generated content." The video was available to the public at http://www.youtube.com/watch?v=N1KfJHFW1hQ.

Universal owns the copyright to "Let's Go Crazy." On June 4, 2007, Universal sent YouTube a takedown notice pursuant to Title II of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512 (2000). The notice was sent to YouTube's designated address for receiving DMCA notices, "copyright@youtube.com," and demanded that YouTube remove Lenz's video from the site because of a copyright violation. YouTube removed the video the following day and sent Lenz an email notifying her that it had done so in response to Universal's accusation of copyright infringement. YouTube's email also advised Lenz of the DMCA's counter-notification procedures and warned her that any repeated incidents of copyright infringement could lead to the deletion of her account and all of her videos. After conducting research and consulting counsel, Lenz sent YouTube a DMCA counter-notification pursuant to 17 U.S.C. § 512(g) on June 27, 2007. Lenz asserted that her video constituted fair use of "Let's Go Crazy" and thus did not infringe Universal's copyrights. Lenz demanded that the video be re-posted. YouTube re-posted the video on its website about six weeks later. As of the date of this order, the "Let's Go Crazy # 1" video has been viewed on YouTube more than 593,000 times.

In September 2007, Prince spoke publicly about his efforts "to reclaim his art on the internet" and threatened to sue several internet service providers for alleged infringement of his music copyrights.^[2] Lenz alleges that Universal issued the removal notice only to appease Prince because Prince "is notorious for his efforts to control all uses of his material on and off the Internet." Lenz's Opposition Brief at 3. In an October 2007 statement to ABC News, Universal made the following comment:

Prince believes it is wrong for YouTube, or any other user-generated site, to appropriate his music without his consent. That position has nothing to do with any particular video that uses his songs. It's simply a matter of principle. And legally, he has the right to have his music removed. We support him and this important principle. That's why, over the last few months, we have asked You-Tube to remove thousands of different videos that use Prince music without his permission.^[3] [1153] Second Amended Complaint ("SAC"), ¶ 30; see also J. Aliva et al., The Home Video Prince Doesn't Want You to See, ABC NEWS, Oct. 26, 2007, http://abcnews.go.com/ print?id + 3777651 (last viewed July 23, 2008). Lenz asserts in her complaint that "Prince himself demanded that Universal seek the removal of the ["Let's Go Crazy # 1"] video ... [and that] Universal sent the DMCA notice at Prince's behest, based not on the particular characteristics of [the video] or any good-faith belief that it actually infringed a copyright but on its belief that, as `a matter of principle' Prince `has the right to have his music removed.'" SAC ¶ 31.

On July 24, 2007, Lenz filed suit against Universal alleging misrepresentation pursuant to 17 U.S.C. § 512(f) and tortious interference with her contract with You-Tube. She also sought a declaratory judgment of non-infringement. Universal filed a motion to dismiss, which the Court granted on April 8, 2008, 2008 WL 962102. Lenz was given leave to amend her complaint to replead her first and second claims for relief. On April 18, 2008, Lenz filed the operative SAC, alleging only a claim for misrepresentation pursuant to 17 U.S.C. § 512(f). On May 23, 2008, Universal filed the instant motion.

II. LEGAL STANDARD

"Dismissal under Rule 12(b)(6) is appropriate only where the complaint lacks a cognizable legal theory or sufficient facts to support a cognizable legal theory." Mendiondo v. Centinela Hosp. Medical Center, 521 F.3d 1097, 1104 (9th Cir.2008). "While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiffs obligation to provide the `grounds' of his `entitle[ment] to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Bell Atlantic Corp. v. Twombly, ___ U.S. ___, 127 S.Ct. 1955, 1964-65, 167 L.Ed.2d 929 (2007) (internal citations omitted).

III. DISCUSSION

The DMCA requires that copyright owners provide the following information in a takedown notice:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

17 U.S.C. § 512(c)(3)(A) (emphasis added). Here, the parties do not dispute that Lenz used copyrighted material in her video or that Universal is the true owner of [1154]

Prince's copyrighted music. Thus the question in this case is whether 17 U.S.C. § 512(c)(3)(A)(v) requires a copyright owner to consider the fair use doctrine in formulating a good faith belief that "use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law."

Universal contends that copyright owners cannot be required to evaluate the question of fair use prior to sending a takedown notice because fair use is merely an excused infringement of a copyright rather than a use authorized by the copyright owner or by law. Universal emphasizes that Section 512(c)(3)(A) does not even mention fair use, let alone require a good faith belief that a given use of copyrighted material is not fair use. Universal also contends that even if a copyright owner were required by the DMCA to evaluate fair use with respect to allegedly infringing material, any such duty would arise only after a copyright owner receives a counternotice and considers filing suit. See 17 U.S.C. § 512(g)(2)(C).

Lenz argues that fair use is an authorized use of copyrighted material, noting that the fair use doctrine itself is an express component of copyright law. Indeed, Section 107 of the Copyright Act of 1976 provides that "[n]otwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work ... is not an infringement of copyright." 17 U.S.C. § 107. Lenz asserts in essence that copyright owners cannot represent in good faith that material infringes a copyright without considering all authorized uses of the material, including fair use.

Whether fair use qualifies as a use "authorized by law" in connection with a takedown notice pursuant to the DMCA appears to be an issue of first impression. Though it has been discussed in several other actions, no published case actually has adjudicated the merits of the issue. See, e.g., Doe v. Geller, 533 F.Supp.2d 996, 1001 (N.D.Cal.2008) (granting motion to dismiss for lack of personal jurisdiction).

A. Fair Use and 17 U.S.C. § 512(c)(3)(A)(v).

When interpreting a statute, a court must begin "with the language of the statute and ask whether Congress has spoken on the subject before [it]." Norfolk and Western Ry. Co. v. American Train Dispatchers Ass'n, 499 U.S. 117, 128, 111 S.Ct. 1156, 113 L.Ed.2d 95 (1991). If "Congress has made its intent clear, [the court] must give effect to that intent." Miller v. French, 530 U.S. 327, 336, 120 S.Ct. 2246, 147 L.Ed.2d 326 (2000) (internal quotation marks and citation omitted). Here, the Court concludes that the plain meaning of "authorized by law" is unambiguous. An activity or behavior "authorized by law" is one permitted by law or not contrary to law. Though Congress did not expressly mention the fair use doctrine in the DMCA, the Copyright Act provides explicitly that "the fair use of a copyrighted work ... is not an infringement of copyright." 17 U.S.C. § 107. Even if Universal is correct that fair use only excuses infringement, the fact remains that fair use is a lawful use of a copyright.^[4] Accordingly, in order for a copyright owner to proceed under the DMCA with "a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law," the owner must evaluate whether the material makes fair use of the copyright. 17 U.S.C. § 512(c)(3)(A)(v). An allegation [1155] that a copyright owner acted in bad faith by issuing a takedown notice without proper consideration of the fair use doctrine thus is sufficient to state a misrepresentation claim pursuant to Section 512(f) of the DMCA. Such an interpretation of the DMCA furthers both the purposes of the DMCA itself and copyright law in general. In enacting the DMCA, Congress noted that the "provisions in the bill balance the need for rapid response to potential infringement with the end-users [sic] legitimate interests in not having material removed without recourse." Sen. Rep. No. 105-190 at 21 (1998).

Universal suggests that copyright owners may lose the ability to respond rapidly to potential infringements if they are required to evaluate fair use prior to issuing takedown notices. Universal also points out that the question of whether a particular use of copyrighted material constitutes fair use is a fact-intensive inquiry, and that it is difficult for copyright owners to predict whether a court eventually may rule in their favor. However, while these concerns are understandable, their actual impact likely is overstated. Although there may be cases in which such considerations will arise, there are likely to be few in which a copyright owner's determination that a particular use is not fair use will meet the requisite standard of subjective bad faith required to prevail in an action for misrepresentation under 17 U.S.C. § 512(f). See Rossi v. Motion Picture Ass'n of America, Inc., 391 F.3d 1000, 1004 (9th Cir.2004) (holding that "the `good faith belief requirement in § 512(c)(3)(A)(v) encompasses a subjective, rather than objective, standard").^[5]

The Copyright Act unequivocally establishes the four factors used to determine fair use:

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 or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

17 U.S.C. § 107. Undoubtedly, some evaluations of fair use will be more complicated than others. But in the majority of cases, a consideration of fair use prior to issuing a takedown notice will not be so complicated as to jeopardize a copyright owner's ability to respond rapidly to potential infringements. The DMCA already requires copyright owners to make an initial review of the potentially infringing material prior to sending a takedown notice; indeed, it would be impossible to meet any of the requirements of Section 512(c) without doing so. A consideration of the applicability of the fair use doctrine simply is part of that initial review. As the Ninth [1156] Circuit observed in Rossi, a full investigation to verify the accuracy of a claim of infringement is not required. Rossi, 391 F.3d at 1003-04.

The purpose of Section 512(f) is to prevent the abuse of takedown notices. If copyright owners are immune from liability by virtue of ownership alone, then to a large extent Section 512(f) is superfluous. As Lenz points out, the unnecessary removal of non-infringing material causes significant injury to the public where timesensitive or controversial subjects are involved and the counter-notification remedy does not sufficiently address these harms. A good faith consideration of whether a particular use is fair use is consistent with the purpose of the statute. Requiring owners to consider fair use will help "ensure[] that the efficiency of the Internet will continue to improve and that the variety and quality of services on the Internet will expand" without compromising "the movies, music, software and literary works that are the fruit of American creative genius." Sen. Rep. No. 105-190 at 2 (1998).

B. The Sufficiency of Lenz's Second Amended Complaint

1. The "Prince Policy"

The operative SAC contains sufficient allegations of bad faith and deliberate ignorance of fair use to survive the instant motion to dismiss. Lenz alleges that Universal is a sophisticated corporation familiar with copyright actions, and that rather than acting in good faith, Universal acted solely to satisfy Prince. SAC ¶ 31. Lenz alleges that Prince has been outspoken on matters of copyright infringement on the Internet and has threatened multiple suits against internet service providers to protect his music. Id. at ¶ 28. Lenz also alleges that Universal acted to promote Prince's personal agenda and that its actions "ha[ve] nothing to do with any particular [YouTube] video that uses his songs." Id. at ¶ 30. Although the Court has considerable doubt that Lenz will be able to prove that Universal acted with the subjective bad faith required by Rossi, and following discovery her claims well may be appropriate for summary judgment, Lenz's allegations are sufficient at the pleading stage.

2. Damages

Universal also contends that the SAC fails to allege a compensable loss under the DMCA. Universal Brief at 2. The SAC provides that:

[Lenz's] injury includes, but is not limited to, the financial and personal expenses associated with responding to the claim of infringement and harm to her free speech rights under the First Amendment. Because Universal's notice was intimidating, Ms. Lenz is now fearful that someone might construe some portion of a new home video to infringe a copyright. As a result, she has not posted a single video on You-Tube since she received the takedown notice.

SAC ¶ 38. Universal nonetheless claims that Lenz has not alleged a compensable loss because: (1) Universal is a private entity and thus not subject to First Amendment actions; (2) Lenz did not suffer any actual injury as a result of the notice; (3) Universal is not liable for damages for intimidation; and (4) Section 512 does not provide for injunctive relief.

At oral argument, counsel for Lenz indicated that while the damages incurred in preparing Lenz's counter-notice cannot be elaborated upon for reasons of privilege, Lenz did incur actual damages in reviewing counter-notice procedures, seeking the assistance of an attorney, and responding to the takedown notice. See Transcript of Law & Motion Hearing, July 18, 2008, p. [1157] 5:15-25. Though damages may be nominal and their exact nature is yet to be determined, the Court concludes that Lenz adequately has alleged cognizable injury under the DMCA.

IV. ORDER

Good cause therefor appearing, IT IS HEREBY ORDERED that the motion to dismiss is DENIED. Universal shall file its answer within twenty (20) days of the date of this order.

[1] Lenz has posted other home videos on You-Tube, allegedly for the same purpose. These additional videos are not at issue in this action.

[2] See, e.g., M. Collett-White, Prince to Sue YouTube, eBay Over Music Use, REUTERS, Sept. 13, 2007, http://www.reuters.com/article/ internetNew/idUSL1364328420070914? feedtype=.RSS&feedName_InternetNews& rpc=22&sp=true (last visited July 23, 2008).

[3] Lenz has dubbed this alleged pattern of activity the "Prince Policy."

[4] The Supreme Court also has held consistently that fair use is not infringement of a copyright. See e.g., Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 433, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) ("[a]nyone ... who makes a fair use of the work is not an infringer of the copyright with respect to such use.").

[5] One might imagine a case in which an alleged infringer uses copyrighted material in a manner that unequivocally qualifies as fair use, and in addition there is evidence that the copyright owner deliberately has invoked the DMCA not to protect its copyright but to prevent such use. See, e.g., Online Policy Group v. Diebold, Inc., 337 F.Supp.2d 1195, 1204-05 (N.D.Cal.2004) (suggesting that the copyright owner sought to use the DMCA "as a sword to suppress publication of embarrassing content rather than as a shield to protect its intellectual property").

706 F.Supp. 1123 (1989)

[1124] Stefan Bauer-Mengelberg, New York City, for plaintiff.

John C. Lankenau, Robert D. Balin Lankenau Kovner & Bickford, New York City, for defendants.

OPINION AND ORDER

MUKASEY, District Judge.

The facts underlying this copyright infringement action developed over more than thirty years, beginning with a journalist's involvement as observer and, slightly, as participant, in the August 1953 overthrow of the Iranian government headed by Prime Minister Mohammed Mossadegh. The dispute centers on an unpublished manuscript by that journalist, plaintiff Kennett Love, written in 1960. The manuscript describes events surrounding the overthrow and the restoration to power of the Pahlevi monarchy in the person of the Shah—in particular, facts suggesting strongly that this country's Central Intelligence Agency had a hand in the coup, and also that Love himself may have played a role in speeding the outcome of the battle that broke resistance in front of Mossadegh's house at the climax of the coup.

More than half of that unpublished manuscript was quoted verbatim in defendant Jonathan Kwitny's 1984 book, Endless Enemies, published and distributed by the remaining defendants.^[1] Kwitny claims, and Love denies, that he had Love's consent to publish to the extent he did, and that in any event publication here was a fair use of Love's account within the meaning of the copyright statute. The case was tried to the court without a jury. Because I have found, after considering all the evidence and weighing the credibility of the witnesses, that Kwitny did not have Love's consent to use the work to the extent he did, and that the fair use doctrine does not protect the unauthorized publication here at issue, judgment will be entered for plaintiff as to liability. The parties agreed that the issue of damages would be tried separately, if necessary.

I.

In August 1953 plaintiff Kennett Love was the New York Times correspondent in Teheran who witnessed and reported on the overthrow of the Mossadegh government. In the spring of 1960, while studying at Princeton University, Love wrote a course paper entitled "The American Role in the Pahlevi Restoration" which, as its name suggests, treats several incidents Love saw at the time of the overthrow that reflected this country's involvement—through the [1125] activities of the CIA—in the August 1953 events.

In particular, Love describes being taken just before the climax of the coup by an American political attache, to whom he refers as a CIA man, to the home of another embassy official where he met Ardeshir Zahedi, the son of General Fazlollah Zahedi. The general would replace Dr. Mossadegh as part of the Pahlevi restoration. He saw there also a large copying machine that was being used to duplicate a royal decree or firman proclaiming General Zahedi to be prime minister, and took several copies to his hotel where he left them on the front desk. In the paper, Love recounts also the tactics employed by street gangs allegedly organized by another CIA agent and paid so handsomely in U.S. currency as to depress the dollar on Teheran currency markets for days after the coup.^[2] Further, Love describes his own responsibility, "in an impromptu sort of way, for speeding the final victory of the royalists." This arose from his having encountered about a half dozen royalist tanks sitting idle at the radio station, where he had gone to broadcast a dispatch. He told their commanders of the battle then underway in front of Mossadegh's house, which was defended by three tanks, and suggested they join the fray. Love reports that they followed his suggestion, and turned the battle in favor of the royalist side. (Px 5A, p. 39)

These incidents, except for an unexplained drop in the dollar on Teheran currency markets, were not reported in the stories that appeared under Love's by-line in the New York Times.

In July 1966, while interviewing Allen W. Dulles, then former director of the CIA, in connection with a book on the 1956 Suez crisis, Love mentioned his 1960 paper. Dulles expressed his interest, and within the week Love sent him a copy. Dulles apparently placed Love's paper in his files. When the retired CIA director died in 1969, he left those files, including Love's paper, to Princeton University, where they were housed in the Seeley Mudd Manuscript Library. That library permits access to the Dulles papers only upon agreement that any article based on those papers be cleared in advance, and copies onto each page of those papers duplicated for a researcher the following notice:

"The U.S. Copyright Law (Title 17j[17], U.S.Code) governs the making of photocopies of copyrighted material. The person making use of this photocopy is liable for any infringement of the Copyright Law. Manuscripts copied from THE ALLEN DULLES PAPERS in the Princeton University Library are not to be reproduced or published without the permission of the Library."

Love testified that he took particular care to assure that any use made of his work, including the unpublished Princeton paper, was accurate in his view and that he would generally review any such proposed use as the price of granting his permission. In the spring and summer of 1980 Professor Barry Rubin of Georgetown University sought and received Love's permission to cite the paper in limited fashion in his book, supra at n. 2, but only after Love had reviewed and edited the proposed segments, including Rubin's bibliographic citation to Love's paper. Love made it a point to assure that the citation did not create the impression Love had written the paper for Dulles or the CIA. (Px 11) He testified also to having taken particular care before giving permission to quote his paper in two other works. (Tr. 354)

In his concern about being connected with the CIA, Love seems to have been prescient. In September 1980 the magazine CounterSpy, which prides itself, if that is the term, on exposing CIA agents, heralded its monthly issue with a press conference to announce an article purporting to [1126] expose Love as a CIA agent, based on the 1960 paper. The magazine also quoted large segments of the paper, without Love's authorization. Apparently, CounterSpy editor John Kelly had obtained a copy of the paper without complying with the restrictions imposed by the library. Love denied then and still does that he acted as such an operative. CounterSpy's purported revelation and denials by both Love and Times personnel received brief press attention. In one of those stories, which appeared in The New York Times on September 26, 1980, Love was quoted as having attributed to "misguided patriotism" his failure to report on the American involvement in the coup, although the article suggested his knowledge of such involvement did not come until later in 1953.^[3]

In the summer of 1981, Jonathan Kwitny, then a Wall Street Journal reporter and by then the author of four books, began work on Endless Enemies under contract to Congdon & Weed; he continued to work on it, doing "relatively little" else, until it was published in 1984. The thesis of the book is that U.S. policy around the world, and occasionally at home, is often guided by misperceptions of where this country's real interests lie and who and what are the real dangers that confront it. As Kwitny would have it, these misperceptions are frequently induced by multinational corporations, particularly oil companies, and people they have hired or otherwise influenced. He argues that the press fails to correct and in fact reinforces these misperceptions. Kwitny attributes to the policy makers and journalists he faults a world view in which this country is beset continually by what the author believes are imaginary threats— i.e., paranoid visions of "endless enemies."

Kwitny had read Rubin's book and obtained from Kelly of CounterSpy a copy of the Love manuscript purloined from the Princeton library. The manuscript suited Kwitny well, reflecting as it did both this country's involvement in what he argues was a counterproductive battle against an imaginary threat, and the press' failure to report that involvement. He set about trying to reach Love, following a lead provided by a New York Times story about the CounterSpy article in 1980 which reported that Love had a house in East Hampton. According to Kwitny, he tried repeatedly to reach Love at the East Hampton number he received from the telephone company. Kwitny testified that he got no answer until, to his surprise, Love picked up the receiver at about 9:30 on the morning of February 21, 1983, the date of the Washington's Birthday holiday that year. Kwitny testified that he had called so often without receiving an answer that when he finally reached Love he had not prepared himself with a blank piece of paper on which to take notes. He seized a page from his own manuscript and took notes on the back. Kwitny testified that he was then aware of his wish to quote "substantially" from Love's manuscript and so informed Love, who gave his consent to such quotation. (Tr. 177, 199) Kwitny said at trial that he had been conscious of a potential libel problem if he did not convey accurately what Love had written in the manuscript, apparently in that Kwitny would deal harshly with Love for failing to include in his New York Times stories the account of U.S. (and his own) involvement in the 1953 events in Teheran, and that he had to quote extensively from Love's paper in order to give readers the "full flavor" and to offer a talisman of his own good [1127] faith to potentially disbelieving readers. (Tr. 170-71)

The notes include Love's East Hampton post office box number, an item of information not available in any public listing, and reflect that during the conversation Love said he had "never tried to publish" the manuscript, and that he "[m]ay use it in a book but haven't gotten around to it." The notes, insofar as they deal with the subject of Love's authorization to Kwitny to use his paper, read in their entirety as follows: "Told I may quote—With credit. `Fine.' Several times say I intend to quote some of this." (Dx B) The word "substantially," or a term of similar import, appears nowhere in the notes.

Love denied vehemently at trial not only that he had ever given authorization to Kwitny to quote "substantially" from his 1960 manuscript, but that the conversation had taken place at all. Although he had conceded on earlier occasions that Kwitny might have called him, by the time of trial his recollection had hardened into an oft-reiterated certainty that, "There was no phone conversation." (Tr. 339; see also, Tr. 65, 338, 340, 341, 344) In support of his denial, Love testified elaborately to alleged circumstances that would have him living in another house at the time, in the nearby town of Sagaponack, rather than in his East Hampton house where the pipes had frozen. He recounted in some detail why he could recall making certain calendar notes that day in Sagaponack rather than in East Hampton. The details of this denial might be relevant were it not for a single and dispositive piece of evidence as to whether the conversation took place. Kwitny's telephone bill, secured directly from the telephone company, reflects a 15-minute call on the morning in question to Love's East Hampton number. The powerful force of this evidence is enhanced by the presence of Love's post office box number in Kwitny's notes, information that could not have come from any source demonstrably available to Kwitny other than Love himself. Because it defies belief that Kwitny spent 15 minutes in conversation with a workman on the premises or in the mute grasp of a malfunctioning answering machine,^[4] and that he sought to enhance the credibility of fabricated notes by obtaining Love's post office box number from some undisclosed source while neglecting to include in such notes evidence to support his claim that Love authorized "substantial" quotation from the paper, it is apparent that, notwithstanding Love's denials, there was a phone conversation. The contents of that conversation, however, can be determined only after considering other evidence.

Chapter Ten of Kwitny's book, entitled "Upsetting the Balance: Iran and Afghanistan," develops the thesis that the CIA, at the behest of Rockefeller and other oil interests, staged a coup in August 1953 to overthrow Mossadegh, a mere eccentric nationalist and Anglophobe mistaken for a Soviet pawn, and bring to power a violently repressive monarchy. This sowed the seeds of anti-Americanism among the Iranians, and led a quarter century later to the ghastly harvest of the Khomeini regime with resulting denial of Iranian oil to U.S. markets, and local weakness that paved the way for the Soviet invasion of Afghanistan, a process that went unreported in the United States. Of the 26 pages given over to developing this thesis, about half are devoted to lengthy quotations from Love's manuscript, cited as support for the thesis.

Here it bears mention that insofar as Kwitny appears to argue that the U.S. role in overthrowing Mossadegh and restoring the Shah's power incurred the enmity of the Iranians, his view and Love's as expressed in the 1960 paper are consistent, as the following segment, quoted by Kwitny, makes plain:

"What is significant is that Americans restored the Pahlevi monarchy when it threatened to give way before a premier dependent on communist support and that Iranians are well aware of the American role although the American public is not. Thus it is that many Iranians hold the United States responsible for creating and supporting a regime [1128] that they believe has become an increasingly malign influence on the political, social and economic life of the country." (Px 5A, p. 41, quoted in Endless Enemies at 176-77. As therein quoted, the last sentence is italicized.)

Kwitny quoted not only Love's description of events and incidents relating immediately to the August 1953 coup, but also Love's analysis of the underlying political and social conditions in Iran—that country's dispute with the Anglo-Iranian Oil Company; Mossadegh's views and goals; the strengths and strategy of Tudeh, the Iranian communist party—as well as Love's version of U.S. policy toward Iran and his speculation about Soviet intentions in that part of the world.

More than 50 percent of the words in Love's paper are quoted in Chapter Ten of Kwitny's book, interrupted intermittently by pauses to provide facts that do not appear in Love's text, to insert arch and sometimes humorous asides of which many deride Love,^[5] and, occasionally, to summarize rather than quote Love's account. Kwitny italicizes Love's text repeatedly to emphasize portions that he believes support his thesis.

Although Kwitny and Love appear to hold at least congruent if not identical views about the 1953 events in Iran and their consequences, Kwitny presents Love as at best an unwitting tool of the CIA, if not an actual agency hireling, and as a traitor to his profession for failing to report what he knew and did. Thus, before his lengthy quotation from Love's paper, Kwitny describes it as having been "submitted" to Dulles (as opposed to having been sent at his request about six years after it was first written), reports Love's denial "that he was ever actually employed by the CIA" (Kwitny at p. 160), and adds that he can "pretty well accept the Time's word that it wasn't paying him on behalf of the CIA." (Id.) He then concludes that Love "later explained, rather lamely perhaps, that he acted as he did because of `misguided patriotism,'" (Kwitny at 160-61), a reference either to his own conversation with Love or to the September 26, 1980 New York Times article following the CounterSpy imbroglio.^[6] Of Love's suggestion [1129] to the royalist commanders at the radio station that their tanks might be useful at an engagement then in progress at Mossadegh's residence, and their later defeat of the armor protecting that residence, Kwitny wrote as follows:

"And there we have it, folks—the Iranian correspondent for the New York Times directing the successful tank attack on the home of the Iranian prime minister, overthrowing the government, fixing one-man rule in Iran, and setting off a chain of events that would include the loss of Iranian oil to U.S. markets and the invasion of Afghanistan by the Soviet Union." (Kwitny, at 176)

As the publication date for Endless Enemies neared, the book was reviewed by counsel, who apparently recommended that Kwitny memorialize or confirm that he had received Love's permission to quote as extensively as he did. Describing his conversations with counsel, Kwitny testified, "I remember she [counsel] said that there is a substantial amount [of Love's paper], there is a lot of it [quoted in Kwitny's book], so we ought to have something in writing." (Tr. 267) Kwitny did the initial draft of the letter, which was then reviewed and approved by counsel. The letter was dated February 8, 1984 and was addressed to Love at his East Hampton post office box, the address that appears on Kwitny's notes of his February 21, 1983 telephone conversation with Love. By the time the letter was sent, the book was in galleys and Kwitny's editor had already expressed his intention to publish by May "by means of a very fast crash schedule (with a premium paid for fast typesetting)." (Px 50) The full text of the letter, which Kwitny argues confirms a conversation about a year earlier in which he received Love's approval to use "substantial" portions of the 1960 paper, is as follows:

"Since nearly a year has passed since our phone conversation last February 21, I wanted to touch base, first to repeat my respect for your work as the most vivid and detailed account I have found of the events in Iran in 1953 and to thank you again for your cooperation in helping make this knowledge public, and second, to make sure there hasn't been some change either in your personal status or in your knowledge of Iranian events that should be accounted for in my book.

"Although these old events in Iran are only a small portion of the book I've done, which is global in scope, they make an interesting interlude largely because of the kind of detail your 1960 account has helped provide. I want to assure you again that the passages I have selected to use are clearly marked off as quotes and credited to you in the text. I only wish there was more room to print more of it.

"Please let me know if any further information regarding those events has come to your attention. Thank you very much for your help.

"Sincerely,"

Kwitny testified that he and his counsel shared amusement at the sentence, "I only wish there was more room to print more of it." (Tr. 268) Both realized that the book contained a damning indictment of Love's journalistic ethics, and that the quoted sentence, although perhaps literally true, would convey precisely the opposite impression from the book, suggesting to Love that Kwitny had praised him. As to the effect that sentence might have on Love's perception of how much of his paper Kwitny intended to use, Kwitny testified that although the very purpose of the letter was to get "something in writing" confirming Love's alleged agreement to let Kwitny use "substantial" portions of his paper, "If anything was said along that line it would have been minor. Our genuine concern was that obviously if this guy realized how this stuff would make him look in light of what his own stories had reported, he would become, as he did, terribly upset, and he might not have gone along with so openly consenting to having this used." (Tr. 269-70)

The letter bears Kwitny's return address. Love, consistent with his untenable claim that the February 21 conversation never took place, acknowledged he received the letter but claimed he had no idea what [1130] conversation it referred to. He never responded to the letter.

The book was published in mid-1984. In early October 1984 Love encountered Kwitny at the New York Athletic Club during a reception both were attending in honor of representatives of the Nicaraguan Sandinistas. (Dx N) Love testified to the confrontation with great emotion at trial, struggling to peer around his lawyer at the defendant because, "I like to look at Mr. Kwitny while I am telling this." (Tr. 348) Love accused Kwitny of both stealing his words and failing to believe them.

"... I said, `I don't understand it, Mr. Kwitny. You went to the University of Missouri'— ... `I am from Missouri.' I said, `We are both journalists, we were both in the Peace Corps at about the same time, our politics seem to be about the same. Why are you doing this to me, Mr. Kwitny?' He said, `I am terribly sorry, I cannot talk to you now. I have to go get on the receiving line. I hope we can meet in happier circumstances.' My last words to him were, `I assure you, Mr. Kwitny, we will not.'" (Id.)

On October 23, 1984 Love registered the copyright for his 1960 paper. In December 1984, he commenced this action. He sued initially for libel as well as copyright infringement, but his libel claim was dismissed on motion by Judge Owen before the case was transferred to my docket.

Endless Enemies was one of two runners-up for a Pulitzer Prize in 1985 in the "General Nonfiction" category. Kwitny testified that although the book was a critical success, he made no money on it. The publisher, Congdon & Weed, is now in bankruptcy.

II.

Kwitny argues principally that he had Love's permission to quote as he did, citing the February 21, 1983 conversation and his February 8, 1984 letter to Love. Although I do not accept Love's confected denial of the conversation, neither can I accept Kwitny's claim that he received Love's permission to quote "substantial" portions of the paper. It is plain that one of Kwitny's major goals in contacting Love was to secure his consent to use the unpublished work, and that Kwitny took notes of the conversation with full awareness of the significance those notes might have at a later date. He took particular care to note Love's consent, to the extent he gave it— "Told I may quote—With credit. `Fine.'" —and to squeeze into his notes (Tr. 179) "Several times say I intend to quote some of this." (Dx B) If he had said anything to the effect that his quotation would be substantial, as he testified at trial, that word or one of similar import would have appeared in his notes.

Moreover, those portions of his notes reflecting that Love consented to have his paper quoted must be reconciled with other portions of the notes, particularly with the entry, "May use it [the paper] in a book but haven't gotten around to it." Any consent Love gave during that conversation would have to be read, absent other evidence, as no greater than would permit him to use the paper himself at a later date in a book, should he choose to do so. As set forth more extensively below, Kwitny's verbatim quotation of more than half the paper, and by far the most significant portion of the paper, is entirely inconsistent with such later use by Love.

Rejecting Love's insistence that the February 21, 1983 conversation never happened does not necessarily mean that I must accept Kwitny's version of that conversation. To be sure, there is always the possibility that Love lied outright at trial about the conversation in an attempt to conceal his authorization to Kwitny to copy "substantial" parts of his paper. But the available evidence, particularly Kwitny's notes, suggests more strongly to me that Love's denial resulted either from self-delusion or from the erroneous belief that admission of any degree of authorization during that conversation would automatically lose the case. Neither inference is particularly to Love's credit, but neither compels a finding in Kwitny's favor.

Kwitny's February 8, 1984 letter does not change and in fact reinforces my conclusion about the February 21, 1983 telephone [1131] call. In particular, the two-edged sentence that was a source of amusement to Kwitny and his lawyer—"I only wish there was room to print more of it."—because they but not Love were aware that Kwitny's only regret was the inability to criticize Love even more harshly, could only minimize in Love's mind how much of his paper was to be quoted. The above sentence and the observation that "those old events in Iran are only a small portion of the book I've done," are the only two statements in the letter that provide any suggestion of volume. Together, they add up to a half truth tending strongly, in the manner of such fractional verities, to mislead anyone who does not know the other half. In no sense do they convey or confirm an intent to print verbatim half by volume, and far more by figurative weight, of Love's 41-page paper. Accordingly, Love's failure to respond cannot be read as consent to such quotation.

Kwitny argues that Love granted him an oral nonexclusive license. Although a copyright holder may license another party to use copyrighted material, the defendant must show that he did not exceed the scope of the license. Power Lawn Mower Parts, Inc. v. Lawn Mower Parts, Inc., [1981-83] Copyright L.Dec. (CCH) ¶ 25,317 at 16,796, 16, 798 (W.D.N.Y. August 24, 1981) [1981 WL 1381]. See also Gilliam v. American Broadcasting Co., 538 F.2d 14, 20 (2d Cir.1976). As I have shown, any consent Love gave during that conversation was limited to small excerpts such as would enable Love to publish the paper in the future. Kwitny's verbatim quotation of 50% of the manuscript is, by his own account in his notes of the specifics of the license, outside its scope.

Alternatively, the defense of consent may be viewed as part of the defense of equitable estoppel. Kwitny, however, fares no better here. "It is well settled that `consent, whether express or implied from long acquiescence with knowledge of the infringement, will prevent relief in equity on the principle of estoppel.'" Wiegand Co. v. E. Trent Co., 122 F.2d 920, 925 (3rd Cir.1941) (citation omitted) (emphasis added), cert. denied, 316 U.S. 667, 62 S.Ct. 1033, 86 L.Ed. 1743 (1942). See also, N. Boorstyn, Copyright Law § 10.25 at 311 (1981) ("To establish the defense of estoppel, the defendant must show that plaintiff knew of defendant's infringing acts, expressly or impliedly consented to such acts through inaction or acquiescence....)

The requirements for such an estoppel, used by the Ninth Circuit in Hampton v. Paramount Pictures Corp., 279 F.2d 100 (9th Cir.), cert. denied, 364 U.S. 882, 81 S.Ct. 170, 5 L.Ed.2d 103 (1960), and adopted by this Circuit in Lottie Joplin Thomas Trust v. Crown Pub., 456 F.Supp. 531 (S.D. N.Y.1977), aff'd, 592 F.2d 651 (2d Cir.1978), are:

(1) the party to be estopped must know the facts of the defendant's infringing conduct;

(2) he must intend that his conduct shall be acted on or must so act that the party asserting estoppel has a right to believe that it is so intended;

(3) the defendant must be ignorant of the true facts, and

(4) he must rely on the plaintiff's conduct to his injury.

3 M. Nimmer, Nimmer on Copyright § 13.07 at 13-133 (1988). Although these principles are most often applied to situations involving implied consent arising from inaction over a long period of time, they may be applied with slight and obvious alteration to situations involving express consent. For example, the defendant who argues express consent need not be "ignorant of the true facts." Otherwise, these principles may be applied comfortably to cases involving express oral consent. Freedman v. Select Information Systems, Inc., 221 U.S.P.Q. 848 (N.D.Cal. Jan. 30, 1983) [1983 WL 270] (applying estoppel principles when defendant claimed right to distribute copyrighted computer software as result of "oral license" from plaintiff). Applying those principles here, I find that there was no basis for Love to know as the result of either the February 21, 1983 telephone conversation or Kwitny's February 8, 1984 letter, or both, that Kwitny intended to quote a substantial part of his paper [1132] in Endless Enemies. Accordingly, Kwitny had no right to believe he had been authorized to quote the paper to the extent he did.

III.

Having concluded that Kwitny did not have Love's permission to quote the paper to the extent he did, I must consider Kwitny's claim that his publication nonetheless is protected by the "fair use" doctrine as codified in the Copyright Act, 17 U.S.C. § 107 (1982). Although the 1976 Copyright Act preempted common law copyright, 17 U.S.C. § 301(a), and extended statutory protection to unpublished works, § 107 provides that "fair use" does not infringe a copyright, and gives examples of such use as well as four non-exclusive factors to be considered in determining whether a particular challenged use is a fair use.^[7] "This approach was `intended to restate the [pre-existing judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.'" Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549, 105 S.Ct. 2218, 2225, 85 L.Ed.2d 588 (1985) (quoting H.R. Rep. No. 1476, 94th Cong., 2d Sess. 66 (1976), reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5680).

The fair use doctrine, "firmly planted in the early English common law," Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1259 (2d Cir.1986), cert. denied, 481 U.S. 1059, 107 S.Ct. 2201, 95 L.Ed.2d 856 (1987), permits others than the copyright owner to use copyrighted material without the owner's consent. Its justification lies in the very purpose of copyright protection—"to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const., art. I § 8. The fair use doctrine promotes that goal by defining instances when the law will "`subordinate the copyright holder's interest in a maximum financial return to the greater public interest in the development of art, science and industry.'" Rosemont Enter., Inc. v. Random House, Inc. 366 F.2d 303, 307 (2d Cir.1966) (quoting Berlin v. E.C. Publications Inc. 329 F.2d 541, 544 (2d Cir.1964)), cert. denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967).

These principles underlie the four factors enumerated in the statute, which do not so much define fair use as provide subjects to consider in determining when it is present. New Era Publications Int'l v. Henry Holt and Co., 695 F.Supp. 1493, 1499 (S.D.N.Y. 1988). Although "the fair use determination often requires a complex and subtle evaluation of numerous mixed issues of fact and law," Maxtone, 803 F.2d at 1259, and the statute itself was drafted so as to leave courts free to adapt the doctrine as the facts may require, id. at 1260, such that extensive analysis is often necessary, see, e.g., New Era, that is not to say that there is no such thing as a straightforward case that can be resolved by considering the four factors Congress has gleaned from the common law. This is such a case.

1. Purpose and Character of the Use— Here Kwitny argues, and I agree, that his book may be considered in any of several categories commonly regarded as potentially fair use, and enumerated in the statute, including criticism, comment, scholarship and, notwithstanding the time lapse between the underlying events and the book, news reporting. Nor is the fact that Kwitny's [1133] use of the material was for a commercial rather than a nonprofit purpose a basis for finding that this factor necessarily weighs against him. Salinger v. Random House, Inc., 811 F.2d 90, 96 (2d Cir.), cert. denied, ___ U.S. ___, 108 S.Ct. 213, 98 L.Ed.2d 177 (1987); Maxtone, 803 F.2d at 1262.

However, Kwitny next invites a leap that the cases do not justify and that I am unwilling to make. He argues in essence that because his treatment of both Love's account and his conduct may be viewed as criticism, comment, scholarship and news reporting, he was either compelled or entitled to use a huge proportion of Love's protected words to make his point. (Tr. 170-71) That Kwitny considered Love's account "astonishing and telling," wanted to give his readers "the full flavor," and sought to dispel disbelief by using another author's account to lend "an air of authenticity to the facts that are in it," does not make his use "fair" for copyright purposes. The dilemma posed by a choice between copying and the risk of distortion was considered by the Second Circuit explicitly in Salinger and found insufficient to justify a decision to copy. As the court noted in that case, "the copyright owner secures protection only for the expressive content of the work, not the ideas or facts contained therein, [citation omitted] a distinction fundamental to copyright law and of special significance in determining whether infringement has occurred in a work of ... historical or contemporary events." Salinger, 811 F.2d at 95. Accordingly, "[t]his dilemma [distortion or copying] is not faced by the [author] who elects to copy only the factual content of [a protected work]. The [author] who copies only facts incurs no risk of [liability]; he has not taken copyrighted material." Salinger, 811 F.2d at 96. Kwitny was perfectly free to use with impunity the facts Love presented in his paper, including the facts surrounding Love's own conduct. He was not free to use Love's own words.

The expert academic testimony Kwitny offered at trial as to how important the disclosures in Love's paper are to an understanding of events in Iran does not generate a different result. What is important are the facts, which are separate from Love's narration of them. The facts are not protected by copyright; the narration is. To the extent that the expert testimony offered by Kwitny conflicted with those principles, and asserted that the narration was somehow crucial, it was, in my view, mere ipse dixit.

Kwitny presented at trial an additional justification that warrants no greater protection from a copyright infringement claim than the one rejected in Salinger:

"And another reason [for using extensive quotations], quite frankly, was that I have become very conscious over the years of libel and the problems that it raises, and I have learned that by quoting a person's own words you can avoid libel problems. I wanted it very clear that this is what he said, that I wasn't paraphrasing, I wasn't making this up, these were his own words." (Tr. 171)

Once again, Kwitny could protect himself from a successful libel claim by reporting facts accurately, or at least accurately enough to survive the allegation that he acted "in a grossly irresponsible manner without due consideration for the standards of information gathering and dissemination ordinarily followed by responsible parties." Chapadeau v. Utica Observer-Dispatch, 38 N.Y.2d 196, 199, 341 N.E.2d 569, 572, 379 N.Y.S.2d 61, 64 (1975).^[8] It is not that it is unfair to use a man's own words against him, simply that poetic justice is not the sort of fairness protected by the doctrine of "fair use."

Thus, although the purpose of the use in Kwitny's book may count in his favor it provides no particularly compelling justification for substantial use of Love's copyrighted words.

2. Nature of the Copyrighted Work—This factor weighs heavily in [1134] Love's favor because the copyrighted work in this case was unpublished. "Under ordinary circumstances, the author's right to control the first public appearance of his undisseminated expression will outweigh a claim of fair use." Harper, 471 U.S. at 555, 105 S.Ct. at 2228.

Kwitny insists that these are not "ordinary circumstances" essentially for three reasons: first, that Love's paper is fact rather than fiction; second, that Love did give copies of his paper to certain persons, and thus the paper, although Kwitny does not argue that it has been published, is not quite as unpublished as, say, the private letters in Salinger; third, that Love's paper and Kwitny's book serve different purposes.

The first of these reasons requires little discussion. That Love's words described facts did not warrant using his words, particularly when there was nothing to stop use of the facts he presented. Salinger, 811 F.2d at 96.

Second, I conclude from the evidence at trial that Love's distribution of the paper to two professors at Princeton, and to Allen Dulles, and his permission to professors Rubin, Dorman, Farhang and Gasiorowski to use particular portions of the paper cannot be construed as dedicating his paper to wholesale use in the academic or any other community. Indeed, the restrictions he placed on Professor Rubin's use of the paper, even as to the form used to cite it, suggest Love intended to retain control over its use. Kwitny's own notes reflect that Love was still considering in 1983 using his paper in a book. As to Kwitny's suggestion that Love's failure to sue CounterSpy for its unauthorized publication of excerpts from the paper, Love provided a perfectly credible explanation at trial: he believed the magazine was judgment proof. Diamond v. Am-Law Publishing Corp., 745 F.2d 142 (2d Cir.1984), involving a letter to the editor which, although unpublished, was intended by its author to be published, does not control here.

The third argument, that the two works serve different functions, is to a substantial degree incorrect and, to the extent correct, is insufficient. Here, Kwitny's own introduction to approximately 16 pages that consist mostly of Love's words makes the point nicely: "The best record of how this repression of Iranian independence started comes from the pen of Kennett Love, who was the New York Times reporter in Iran in 1953." Kwitny at 160. That is to say, Kwitny relies heavily in his book on Love's account to describe for his readers what happened at the time. To that extent, the two works serve the identical function. That Kwitny also criticizes Love, the CIA and others cannot itself deprive Love's paper of the protection ordinarily given to unpublished works. To do otherwise would be to create an exception that would swallow the rule.

3. Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole—By any test, this factor must be counted overwhelmingly in Love's favor. Kwitny used more than half the words in Love's unpublished paper, but even this large amount does not begin to measure the substantiality of the taking. I have found it instructive to mark those portions of Love's paper quoted in Kwitny's book and then to read what remains. Eliminating connecting phrases and matter that simply restates or elaborates slightly what is quoted, what remains is a brief description of Iranian politics and U.S.-Iran relations during and just after World War II, of the sort one might find in a textbook, and the author's analysis of the options facing the United States just before the coup. What remains would not justify the title of the paper, "The American Role in the Pahlevi Restoration." If what the Supreme Court refused to permit in Harper & Row was a taking of "essentially the heart of the book," 471 U.S. at 564-65, 105 S.Ct. at 2233, the taking here involves nearly every vital organ of the paper.

Although Kwitny does not seem to argue the point explicitly, I am mindful of the fact that the substantiality of the unauthorized quotation must be measured not against zero but against what I have found Love permitted, as reflected in Kwitny's notes of the February 21, 1983 conversation [1135] and his February 8, 1984 letter to Love—i.e., that Love said he "May use it [the paper] in a book but haven't gotten around to it," and Kwitny "Told I may quote—With credit. `Fine.' Several times say I intend to quote some of this," (Dx B); as well as, "I want to assure you again that the passages I have selected to use are clearly marked off as quotes and credited to you in the text. I only wish there was room to print more of it." (Dx C) To be sure, that would not provide a clear standard against which to measure a claim of slight excess in quotation. But in this case what has been taken is more than "some of" a paper Kwitny was aware Love might wish to use in a book at a later date, particularly attended by Kwitny's expressed regret that there was not room for more. I have no difficulty finding that there was substantial unauthorized quotation beyond what any reasonable author would have expected based on the exchange between Kwitny and Love.

4. Effect Upon the Potential Market for or Value of the Copyrighted Work —This is the single most important factor to consider in determining whether a particular unauthorized use has been fair, because fairness must include no material impairment of the marketability of a copied work. Harper & Row, 471 U.S. at 566-67, 105 S.Ct. at 2233-34.

Kwitny argues that the record reflects no more than "uncrystallized plans" by Love to publish the paper, Maxtone, 803 F.2d at 1264, and offers the bland assurance that Love apparently never intended to publish his paper and that even such uncrystallized plans as he expressed could not be materially impeded because the market for a criticism of Love's paper is different from the market for Love's paper itself. Yet even assuming arguendo that Love, contrary to what he told Kwitny, did not intend to publish his paper in any form, he "has the right to change his mind. He is entitled to protect his opportunity to sell" his paper. Salinger, 811 F.2d at 99 (emphasis in original). Nor do I see any basis to slice the market as Kwitny proposes so as to differentiate those interested in reading Kwitny's views and Love's account together, from those interested in reading Love's account alone, rather than considering simply all who may be interested to learn what happened in Iran during the relevant period and why it happened. In view of the substantial reproduction of Love's paper in Kwitny's book, I conclude that "some impairment of the market seems likely." Id. Accordingly, this factor, too, favors Love.

The factors listed in the statute are not meant to be exclusive, and the statute itself "provides no real instruction as to how the conclusion is to be drawn upon consideration of these factors," New Era, 695 F.Supp. at 1500, although the Supreme Court has found that the last factor is the most important. Harper & Row, 471 U.S. at 566-67, 105 S.Ct. at 2233-34. However, when the enumerated factors weigh as heavily as they do here in favor of plaintiff, how a more delicate balance might have to be struck is of academic concern only. The substantial quotation of Love's paper in Endless Enemies was not fair use.

* * *

For the above reasons, which shall constitute my findings of fact and conclusions of law for purposes of Fed.R.Civ.P. 52(a), defendant is found liable to plaintiff for copyright infringement.

SO ORDERED.

[1] The action has been discontinued with prejudice as to defendants Coliseum Books, Inc., Doubleday Doran Book Shops, Inc. and John Kelly. The action against defendant Congdon & Weed, Inc. has been stayed by order of the Bankruptcy Court.

[2] In this respect Love's account differs from another that purports to describe CIA involvement in the coup: "The CIA provided $1 million in Iranian currency, which [Kermit] Roosevelt had stored in a large safe—a bulky cache since the largest banknotes then available—the 500-rial denomination—were worth only $7.50. Of this sum, $100,000 was given to the two Iranian agents to disburse among the athletic club thugs and the poor of the south Tehran slums." B. Rubin, Paved With Good Intentions: The American Experience and Iran 82 (1981).

[3] Love insisted at trial that, notwithstanding the contents of his 1960 paper, he was unaware in August 1953 of CIA involvement in the coup. He conceded that in 1954 he had written to Times foreign editor Emanuel Freedman explaining that he had omitted from his Times dispatches evidence of U.S. involvement in Iran because such evidence would have been "too good grist for the Russian propaganda mill." (Tr. 125) At trial, however, he claimed he had simply been trying in such correspondence to provoke his editor into making him pursue the story. He testified that the Times had shown itself uninterested in any reports that might have disclosed covert U.S. activities, and insisted that whatever "misguided patriotism" there had been in not reporting fully on events in Iran had been that of his colleague in the Middle East Robert Doty and "the entire top level of The New York Times, beginning with Manny Freedman and up." (Tr. 156)

[4] Love apparently intended to pursue this theory at trial, but then waived it. (Tr. 335-37)

[5] For example, after quoting Love's description of his cordial reception at a large and disciplined Tudeh rally and the organizers' willingness to give him a grandstand view, Kwitny interjects that "maybe they wouldn't have [accommodated Love] if they had known he was getting ready to take an active, covert part in a CIA coup." Kwitny at p. 170. Love refers to two people who operated the copying machine to duplicate copies of the firman at the home of the unidentified U.S. attache, of whom Kwitny writes: "[Apparently these were U.S. government employees; our Iranian stooges couldn't even churn out their own propaganda.]" Kwitny at p. 172.

[6] Kwitny does not discuss how Love's failure to report what he saw and did in Teheran, and his newspaper's decision not to pursue the story, if there was such a decision, compared to journalistic practice at the time—i.e., 1953, as distinct from 1984, when Kwitny published his book. There is substantial evidence for the proposition that it was once accepted for journalists not to print information they believed disserved the national interest. Thus, for example, Thomas P. ("Tip") O'Neill, the former Speaker of the House of Representatives, reports that in 1934 he pursued the invitation of his Boston acquaintance Missy LeHand, President Roosevelt's secretary, to visit the White House when he was in Washington, and was shown into the President's office where he was "shocked" to see Roosevelt in a wheel chair. "Like most Americans, I had absolutely no idea that Franklin Roosevelt was disabled. It's hard to imagine in this age of television, but in those days the president's handicap was kept secret out of respect for the office." T. O'Neill & W. Novak, Man of the House 3 (1987). Such journalistic self-censorship is referred to in a section headed "Another Era" in F. Friendly & M. Elliott, The Constitution: That Delicate Balance 54-55 (1984). Perhaps the most famous example of the practice, and the one generally conceded to have ended it, was the decision by the editors of The New York Times in 1961 not to report on the then imminent Bay of Pigs invasion. See T. Szulc, "The New York Times and the Bay of Pigs" in D. Brown & W.R. Bruner, eds., How I Got That Story 315-29 (1967). A year later, the editors of the Times agreed to withhold for 24 hours at President Kennedy's request news of the developing Cuban missile crisis, but only after the President promised, in the words of Times editor Max Frankel, to "shed no blood and start no war during the period of our silence." Frankel, A Washington Education, The Columbia Forum 10 (Winter 1973). "No such bargain was ever struck again, though many officials made overtures. The essential ingredient was trust, and that was lost somewhere between Dallas and Tonkin." Id.

[7] 17 U.S.C. § 107 provides as follows:

Notwithstanding the provisions of section 106, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, 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 or value of the copyrighted work.

[8] There is no doubt that the subjects Kwitny wrote about are "arguably within the sphere of legitimate public concern, which is reasonably related to matters warranting public exposition," id., so as to warrant applying the Chapadeau standard.

868 F.Supp.2d 962 (2012)

[965] George Gerhard Brell, Harrison J. Frahn, IV, Sara Grace Wilcox, Simpson Thacher & Bartlett LLP, Palo Alto, CA, Sarah E. Luppen, Simpson Thacher & Bartlett, Los Angeles, CA, for Plaintiff.

David E. Yerushalmi, Law Offices David E. Yerushalmi, Woodland Hills, CA, Erin Mersino, Thomas More Law Center, Robert J. Muise, American Freedom Law Center, Ann Arbor, MI, Teresa L. Mendoza, Law Office of Charles S. Limandri, APC, Rancho Santa Fe, CA, for Defendants.

[966] ORDER RE CROSS MOTIONS FOR SUMMARY JUDGMENT

JAMES V. SELNA, District Judge.

Plaintiff Northland Family Planning Clinic, Inc. ("Northland") claims that Defendants Center for Bio-Ethical Reform ("CBR"), Gregg Lee Cunningham ("Cunningham"), Donald Cooper ("Cooper"), Seth Gruber ("Gruber"), Todd Bullis ("Bullis"), Reel to Real Ministries, Inc., doing business as The Apologetics Groups ("TAG"), and Eric Holmberg ("Holmberg") (collectively, "Defendants"), infringed Northland's copyrighted video, "Every Day, Good Women Choose Abortion" (the "Northland Video"), by creating three videos that feature excerpts of the Northland Video. Defendants claim fair use. The parties have brought cross motions for summary judgment. (Defs.' Mot. Br., Docket No. 40; Pl.'s Mot. Br., Docket No. 44.) Northland seeks a partial judgment finding that Defendants infringed Northland's copyright and cannot avail themselves of the fair use defense.^[1] Defendants move for summary judgment finding that certain individuals did not infringe Northland's copyright, and that any use of the Northland Video is insulated by the fair use defense. For the following reasons, Northland's Motion is DENIED and Defendants' Motion is GRANTED.

I. Background

Northland runs family planning clinics in the greater Detroit area of Michigan. (Declaration of Sara G. Wilcox ("Wilcox Decl."), Ex. A, Deposition of Renee Chelian ("Chelian Dep.") 19:6-7, 22:22-23:2, Docket No. 56.) Northland created the Northland Video in late 2009 to be used for outreach, counseling, and education in an effort to de-stigmatize abortion. (Id. at 57:20-58:7; Declaration of Rene Chelian ("Chelian Decl.") ¶ 2, Docket No. 57.) The message of the Northland Video is that abortion is not uncommon, and that women are good regardless of how they exercise their reproductive rights. (Id.; Notice of Filing of Exs., Chelian Dep., Ex. 8, Docket No. 50.) The Northland Video conveys that the clinic offers guidance to women who are struggling to feel good about themselves after having an abortion and women who are grappling with the decision whether to terminate their pregnancy. (Chelian Dep., Ex. 6.) Northland founder, Rene Chelian, and her employees spent significant time and creative effort writing and revising the script they used to create the Northland Video. (See id. at 83:2-25.) Northland registered a copyright for the Northland Video with the United States Copyright Office in 2009. (Wilcox Decl., Ex. D.) Northland posted the Northland Video on its website and on YouTube in November 2009. (First Amended Compl. ("FAC") ¶ 22.)^[2]

Beginning in early 2011, Defendants made a series of videos using unaltered segments of the Northland Video without Northland's permission. TAG, acting through its director and sole employee, Eric Holmberg, created a 1 minute and 17 second video that uses several verbatim segments of the Northland Video (the "TAG Video"). (Pl.'s Notice of Lodging, Ex. F, Deposition of Eric Holmberg [967] ("Holmberg Dep.") 17:19-22, 20:11-16, 37:10-25, Docket No. 77.) The TAG Video alternates between images from the Northland Video and images depicting alleged abortions. (Id. at Ex. 39.) The narrative from the Northland Video continues while the screen shows graphic, up-close images of the surgical procedure of dismembering and removing fetuses, many of which have discernible limbs or appear to be nearly viable. (Id.) The TAG Video uses the segments of the Northland Video in the same order as they appear in the original; Northland's logo and copyright mark remain as they did in the original. (Id.) The TAG Video closes with Northland's name, telephone number, and the words "Your Dead baby at 10 to 12 weeks," superimposed over a bloody, dismembered fetus. (Id.) Holmberg testified that he created the TAG Video to expose the "fallacies" of the Northland Video. (Id. at 39:1-8, 40:18-41:5.) He stated that he made the TAG Video "quickly," and posted it on his private YouTube channel a "few hours" after viewing the Northland Video. (Id.) Holmberg then emailed the link to the TAG Video on YouTube to an unknown number of persons, including Cunningham. (Id. at 45:3-20; Wilcox Decl., Ex. I.) The TAG Video was posted to a high-traffic anti-abortion blog called JillStanek.com, (Wilcox Decl., Ex. J), and Cunningham, the director of CBR, instructed Cooper, CBR's manager, to post the TAG Video on the CBR website with a credit to TAG, (Id. at Ex. K).

Then Cunningham decided to make his own video. Acting on behalf of CBR, Cunningham directed a contractor to create a video using segments from the Northland Video, the TAG Video, and clips of "the strongest abortion-in-progress shots" from other canned footage. (Id. at Ex. L.) Cunningham instructed the contractor to alternate between the Northland segments and the alleged abortion images, akin to the TAG Video. The resulting video (the "CBR I Video") opens with a Biblical citation, then alternates between segments of the Northland Video, using both its audio and visual, and the abortion footage, which is accompanied by a foreboding song called "Natural One." (Id.; Pl.'s Notice of Lodging, Ex. A, Deposition of Tod Bullis ("Bullis Dep."), Ex. 5.) Northland's logo and copyright remain on the CBR I Video. (Bullis Dep., Ex. 5.) On behalf of CBR and at the direction of Cunningham and Cooper, Gruber posted the CBR I Video to Bullis' website called Pro-LifeTube.com^[3] on January 25, 2011. (Wilcox Decl., Ex. R. Deposition of Seth Gruber ("Gruber Dep.") 30:23-31:17.) Subsequently, Cunningham directed the contractor to add a quotation from George Orwell to the beginning of the CBR I Video, thereby creating the CBR II Video. (Wilcox Decl., Ex. S; Bullis Decl., Ex. 6.) Gruber, on behalf of CBR and at Cunningham's direction, then posted the CBR II Video on Pro-LifeTube.com. (Gruber Dep. 30:6-31:1.) Gruber also posted embedded links to the CBR II Video on the CBR website in at least three places, including a link where the Video could be downloaded. (Id. at 33:7-21, 92:9-16, 93:9-94:2.) The CBR Videos contain approximately 2 minutes and 22 seconds of the original 4 minute and 41 second Northland Video, or 43 percent of the original. (Wilcox Decl., Ex. U, Response to First Request for Admission No. 1.) The CBR Videos are each slightly more than four minutes long, and thus the Northland Video footage accounts for approximately half of the CBR Videos. (Id.) It is undisputed that no Defendants sought Northland's permission to use the Northland [968] Video to create the TAG or CBR Videos. (Wilcox Decl., Ex. T, Response to Second Request for Admission No. 64.)

There is some evidence suggesting that CBR uses the CBR Videos for publicity and fundraising. Gruber testified that a button labeled "Donate" in bold appears on every page on which the CBR Videos were posted; however, Gruber also noted that this button appears on the top right corner of the site regardless of which page a user views. (Gruber Dep. 88:5-25.) Cunningham testified that he sent the CBR Videos to "everyone [he] could possibly think of," and showed them at group meetings "every chance" he got, "everywhere" he went. (Pl.'s Notice of Lodging, Declaration of Gregg Lee Cunningham ("Cunningham Dep.") 133:24-134:5.) Cunningham also testified that he shows the CBR Videos "every time" he does a fundraising pitch, but Cunningham claims he does not remember whether he used the CBR Videos in his pitches prior to this lawsuit. (Id. at 156:7-8, 157:14-18.) He also explained that he shows the CBR Videos at fundraisers because the CBR Videos are "part of what we are doing," and CBR's "entire existence hangs on the goodwill of donors who want to know what we're doing and want to know what our challenges and burdens are...." (Id. at 156:18-21.)

Northland's counsel sent letters on March 18, 2011 to Bullis as the owner of Pro-LifeTube.com, and to Cunningham and Cooper as director and manager of CBR, respectively, informing them that the CBR Videos infringe Northland's copyright and demanding that the CBR Videos be removed from their websites.^[4] (Wilcox Decl., Exs. W, X.) Bullis did not respond. (Bullis Dep. 37:13-38:25.) CBR replied through counsel refusing to remove the CBR Videos. (Wilcox Decl., Ex. Z.)

Northland contemplated licensing the Northland Video to other clinics, and Chelian had spoken with individuals in other facilities about their potential use of the material. (Chelian Dep. 38:24-40:3; Chelian Decl. ¶ 5; Declaration of E. Barnes ("Barnes Decl.") ¶ 5, Docket No. 69.) However, once prospective licensees such as Ms. Barnes became aware of the CBR and TAG Videos, they were no longer interested in using the Northland Video. (Barnes Decl. ¶¶ 7-9.) Ms. Chelian also determined that she could no longer use the Northland Video at speaking engagements and seminars in light of the TAG and CBR Videos. (Chelian Decl. ¶ 6.)

Northland filed this action against Defendants on May 12, 2011, alleging Defendants' conduct violated Northland's exclusive right to use of the Northland Video pursuant to 17 U.S.C. § 106. (Compl., Docket No. 1.) Northland filed its FAC on November 29, 2011. Both parties have moved for summary judgment regarding the applicability of the fair use defense to Defendants' conduct.

II. Legal Standard

Summary judgment is appropriate when the record, read in the light most favorable to the non-moving party, indicates that "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law."^[5]

[969] Fed.R.Civ.P. 56(c); see also Celoter Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those necessary to the proof or defense of a claim, and are determined by referring to substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In deciding a motion for summary judgment, "[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

The moving party has the initial burden of establishing the absence of a material fact for trial. Anderson, 477 U.S. at 256, 106 S.Ct. 2505. If the moving party satisfies its initial burden, the nonmoving party "may not rest upon the mere allegations or denials" of the moving party's pleadings, but "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). Furthermore, "Rule 56(c) mandates the entry of summary judgment ... against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548. Thus, if the nonmoving party does not make a sufficient showing to establish the elements of its claims, the Court must grant the moving party's motion.

Where the parties have made cross-motions for summary judgment, as they have in this case, the Court must consider each motion on its own merits. Fair Hous. Council v. Riverside Two, 249 F.3d 1132, 1136 (9th Cir.2001). The Court will consider each party's evidentiary showing, regardless of which motion the evidence was tendered under. See id. at 1137.

"In determining any motion for summary judgment or partial summary judgment, the Court may assume that the material facts as claimed and adequately supported by the moving party are admitted to exist without controversy except to the extent that such material facts are (a) included in the `Statement of Genuine Disputes' and (b) controverted by declaration or other written evidence filed in opposition to the motion." Local Rule 56-3.

III. Discussion

A. Copyright Infringement

To prevail on a claim of copyright infringement. Plaintiffs must show "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Here, the parties do not dispute that Northland owns a valid copyright to the Northland Video. Nor do they dispute that the TAG and CBR Videos copy substantial portions of the Northland Video. The parties dispute only whether the Defendants' use of the Northland Video constitutes fair use.

B. Fair Use

Fair use is an exception to a copyright holder's right to exclusive use of the original work and its derivatives. 17 U.S.C. § 107. It is "a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent." Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985) (quoting H. Ball, Law of Copyright & Literary Property 260 (1944)). The privilege results from an understanding that some limited use of copyrighted material is necessary to allow artists and authors to improve upon, comment on, or criticize prior works. See id.; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Fair use reflects the goals of the Copyright [970] Act "to promote the progress of science and art by protecting artistic and scientific works while encouraging the development and evolution of new works." Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 799 (9th Cir.2003).

Section 107 of the Copyright Act codified the common law framework for identifying fair use:

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 or value of the copyrighted work.

17 U.S.C. § 107. The analysis "permits and requires courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster." Campbell, 510 U.S. at 577, 114 S.Ct. 1164 (quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990)) (alterations omitted). The factors are not winner-take-all categories to be tallied at the end to determine the prevailing party; they are intended to be carefully weighed case by case with an eye towards the policies underlying copyright protection. See id. "Nor may the four statutory factors be treated in isolation one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright." Id.; accord Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc. ("Seuss II"), 109 F.3d 1394, 1399 (9th Cir.1997).

Application of the fair use doctrine is a mixed question of law and fact. Harper & Row, 471 U.S. at 560, 105 S.Ct. 2218. Thus, where the material facts are not subject to dispute, summary judgment on the fair use question is proper. Fisher v. Dees, 794 F.2d 432, 436 (9th Cir.1986). Because fair use is an affirmative defense to copyright infringement, the defendant bears the burden of proving fair use. Campbell, 510 U.S. at 590, 114 S.Ct. 1164; Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1158 (9th Cir.2007).

With this background in mind, the Court considers the four statutory factors individually.

1. Purpose and Character of the Use

Under the first factor, the "purpose and character of the use," the Court considers the extent to which the new work is "transformative." Mattel, 353 F.3d at 800. The new work is "transformative" if it adds "something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Id. (quoting Campbell, 510 U.S. at 579, 114 S.Ct. 1164); Seuss II, 109 F.3d at 1400. While transformative use is not "absolutely necessary" for a finding of fair use, transformative works advance the goals of copyright law, and thus they are at the "heart of the fair use doctrine's breathing space within the confines of copyright." Campbell, 510 U.S. at 579, 114 S.Ct. 1164. Examples of fair use include social commentary, criticism, and news reporting. Id. at 578, 114 S.Ct. 1164. The Court also considers whether the new work is for commercial or non-commercial use. Id. at 580, 114 S.Ct. 1164. Typically, a work created for commercial use is less likely to bear fair use protection; however, the commercial/non-commercial distinction is less significant the more transformative the work is. Id.

[971] Defendants' primary argument is that the TAG and CBR Videos are parodies of the Northland Video, intended to criticize, comment on, and disparage the narrator's calm manner as well as her message that good women choose to terminate their pregnancy and that abortion is "normal."

Parody has transformative value protected under Section 107 because it can provide social benefit by commenting on the original work, and in the process, create a new one. Campbell, 510 U.S. at 579, 114 S.Ct. 1164; see Seuss II, 109 F.3d at 1400 ("Parody is regarded as a form of social and literary criticism, having a socially significant value as free speech under the First Amendment."). A parody employs elements of a prior work to create a new work that, at least in part, comments on the original. Campbell, 510 U.S. at 580, 114 S.Ct. 1164. The difference between parody and satire is that in the former the copyrighted work is "the target" and in the latter it is "merely a vehicle to poke fun at another target." Seuss II, 109 F.3d at 1400 (citing Campbell, 510 U.S. at 580, 114 S.Ct. 1164). "The parody must target the original, and not just its general style, the genre of art to which it belongs, or society as a whole (although if it targets the original, it may target those features as well)." Campbell, 510 U.S. at 597, 114 S.Ct. 1164 (Kennedy, J., concurring); see Mattel, 353 F.3d at 801. In Campbell, for example, the Supreme Court determined that music group 2 Live Crew's rap song "Pretty Woman" was a parody of the Roy Orbison rock ballad "Oh, Pretty Woman" because the former was, at least in part, commenting on the latter. 510 U.S. at 580-81, 114 S.Ct. 1164. The 2 Live Crew version "reasonably could be perceived as commenting on the original or criticizing it, to some degree" because "2 Live Crew juxtaposes the romantic musings of a man whose fantasy comes true, with degrading taunts, a bawdy demand for sex, and a sigh of relief from paternal responsibility." Id. at 583, 114 S.Ct. 1164; cf. Seuss II, 109 F.3d at 1401 (finding the accused work was not a parody because it broadly mimicked Dr. Seuss' characteristic style, but did not hold his style to ridicule).

The Campbell parody rule has been applied across all artistic media. For example, the use of a well-known Annie Leibovitz photograph of Demi Moore posing naked and pregnant was found to be fair in an advertisement for a movie called "Naked Gun 33 1/3: The Final Cut," where the alleged infringer replaced Ms. Moore's head with the "smirking" face of Leslie Nielsen. Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 114 (2d Cir. 1998). The second work was a parody because a viewer could reasonably perceive it as a comment on the "undue self-importance" conveyed by the subject of the first work. Id. In Mattel, artist Thomas Forsythe turned the image of Barbie as the "ideal American woman" on its head with photographs portraying a nude Barbie in danger of being attacked by vintage household appliances. 353 F.3d at 801. While the true Barbie displays unwavering poise and glamor, Forsythe's creations are disheveled, sexualized, occasionally dismembered, and in imminent danger of attack by the domestic items her very persona conjures. Id. at 802. Forsythe's creations are parodies because his social commentary is pointed at Mattel's Barbie and the role of Barbie in influencing women's position in society.

By contrast, when the original work is incidental to the alleged infringer's comment on a broader topic, the work is "better characterized" as a satire. Blanch v. Koons, 467 F.3d 244, 247 (2d Cir.2006). In Blanch, the alleged infringer, "appropriation artist" Jeff Koons, cut out part of a fashion photograph ("Silk Sandals") depicting the legs of a model wearing sandals, [972] and repositioned the image in a landscape of legs surrounded by abundantly glazed confections. The final product is a comment on mass imagery, consumerism, overindulgence, and desire. The court found that Koons' work was "better characterized" as a satire, rather than a parody, because "its message appears to target the genre of which `Silk Sandals' is typical, rather than the individual photograph itself." Blanch, 467 F.3d at 254.

Parody is afforded more leeway than satire under the fair use doctrine because parody necessarily requires the parodist to mimic the original to make its point, while satire "can stand on its own two feet," and thus requires further justification for its borrowing. Campbell, 510 U.S. at 580, 114 S.Ct. 1164. If the alleged infringer merely uses the original to "get attention or avoid the drudgery in working up something fresh," the borrower's fairness claim diminishes or even vanishes, depending on the balance of the remaining factors. Id.

In this case, the TAG and CBR Videos are parodies of the Northland Video because they use segments of the Northland Video in alternation with macabre images of abortion procedures to deride the original work's message that abortion is "normal" and that good women choose to terminate their pregnancy. Akin to Barbie's metamorphosis in Mattel as commentary on gender roles, here, Defendants turn the Northland Video's message "on its head" by alternating clips of the calm, empathetic doctor explaining that choosing to have an abortion does not make you a bad woman, with shockingly graphic images of fetuses being dismembered and removed from the birth canal. For example, in the beginning of the accused Videos, a clip from the Northland Video plays in which the narrator says, "deciding to have an abortion is a normal decision"; then, the screen cuts to a video clip in which it appears that a fetal hand reaches out of the birth canal and gloved fingers — ostensibly those of a doctor — expose more of the hand before using forceps to rip off the appendage. Of course, Defendants' abundantly clear message is that deciding to have an abortion is anything but a "normal decision" made by "good women." The accused Videos continue in that vein, contrasting the serene environment of the narrator's office, her soft, conservative attire, her calm voice, and her message that women are good regardless of how they exercise their reproductive rights, with the gruesome and seemingly savage "reality" of an abortion procedure.

Northland contends that the accused Videos are not parodies because they use verbatim segments of the Northland Video to represent a viewpoint consistent with Northland's message in a "debate" regarding the broader "good women" theme. (Pl.'s Mot. Br. 14-15.) In other words, the Northland clips merely serve as a placeholder for the pro-choice perspective in a reproductive rights debate portrayed in the accused Videos. Northland points to the tag for the CBR Videos as evidence that the Video was intended to be a "debate": "The Most Shocking (Graphic Imagery), Four-Minute Abortion Debate You Will Ever See." Northland likens this case to Henley v. DeVore, 733 F.Supp.2d 1144 (C.D.Cal.2010), asserting that in both cases the defendants "borrow[ed] heavily from the creative aspects" of the original works to make new works on "different subjects." (Pl.'s Mot. Br. 15 (citing Henley, 733 F.Supp.2d at 1158)). Here, the "new work" — the accused Videos — are on a "different subject" because they speak broadly about the abortion "debate" and not about the Northland Video specifically.

However, while the CBR Videos may be coined "debates," it is clear from watching them that Defendants were not attempting to present "both sides" of the issue. The [973] Northland segments do not convey the pro-choice perspective; rather, they are presented for the sake of being sharply criticized. Moreover, unlike Henley, in which the defendants "evoked the same themes" as the two original songs from which it borrowed "to attack an entirely separate subject," here, Defendants copied the Northland Video for the primary, if not exclusive, purpose of attacking it. While the accused Videos may comment globally on the abortion debate, they are primarily focused on criticizing elements of the Northland Video.^[6] Indeed, before this lawsuit was filed, communication between the Defendants shows that the purpose of the Videos was to dispel the "falsities" of the Northland Video, and to create a "parody" contrasting the "soothing lies of the narrator ... and the terrible truths of the abortion." (Wilcox Decl., Ex. K.) Thus, the criticism is targeted at the copyrighted work specifically, not just the pro-choice position. The CBR Videos even suggest that the Northland narrator is Satan, as both CBR Videos are entitled "Angel of Light" and display a quotation from the Biblical verse Corinthians 11:14, which states, "And no wonder, for Satan himself masquerades as an angel of light," before cutting to the narrator. In sum, there is no question of fact that the accused Videos use the original to comment on and criticize that work specifically, and in the process, create a new work.

Northland also argues that the accused Videos are not parodies because they are not "humorous mimicries" of the Northland Video. (Pl.'s Mot. Br. 13.) Indeed, Defendants do not dispute that the accused Videos are humorless. (Defs.' Opp'n Br. 14-15, Docket No. 73.) However, during the hearing, Northland overstated the importance of comedy in parody analysis. Northland quoted Campbell in arguing that parody involves imitation of a previous work for "comic effect or ridicule," but these selected quotations have little, if any, legal effect, as the Court stated:

The germ of parody lies in the definition of the Greek parodeia, quoted in Judge Nelson's Court of Appeals dissent, as `a song sung alongside another.' Modern dictionaries accordingly describe a parody as a literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule, or as a `composition in prose or verse in which the characteristic turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous.' For purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works.

510 U.S. at 580, 114 S.Ct. 1164 (internal citations omitted) (emphasis supplied). Thus, the "heart" of a parody defense is the use of elements of the prior composition to create a new work that comments on or criticizes the original. Id. Moreover, even under the dictionary definition of parody quoted in Campbell, a parody is not necessarily humorous: it imitates a prior work for "comic effect or ridicule."^[7] Id.

[974] (emphasis supplied.) Accordingly, for purposes of copyright law, humor is not a necessary element of parody. Here, the accused Videos fall squarely within the Campbell definition of parody because there is no doubt that a viewer could, and most likely would, reasonably perceive the accused Videos to be highly critical commentary on the original, aimed at ridiculing it.

Finally, Northland argued at the hearing that the accused Videos are not parodies because they criticize a work that is not well known to the public. Northland cited language in Campbell to argue that the object of a parody is always a well-known work: "Parody's humor, or in any event its comment, necessarily springs from recognizable allusion to its object through distorted imitation. Its art lies in the tension between a known original and its parodic twin." Campbell, 510 U.S. at 588-89, 114 S.Ct. 1164. However, as quoted supra, the Campbell Court carefully defined parody "for purposes of copyright law," and nowhere in that definition did the Court limit the parodist's target to well-known works. While the Campbell Court noted in dicta that "parodies almost invariably copy publicly known, expressive works," the Court did not find that parodies always, or by definition, copy publicly-known works. Id. at 586, 114 S.Ct. 1164. Furthermore, the Campbell Court had no occasion to discuss parodies of obscure works because the target of the parody in Campbell was the highly popular song "Oh, Pretty Woman."

At least two courts applying Campbell to parodies of lesser known or obscure works have found that those parodies warranted fair use protection. In one case, a comedian sued for copyright infringement alleging that popular mock news program "The Daily Show" ("Daily Show") used a clip from her public access television program, "The Sandy Kane Blew Comedy Show" ("Kane Show"), without her authorization. Kane v. Comedy Partners, 68 U.S.P.Q.2d (BNA) 1748, 2003 WL [975] 22383387, at *1, 2003 U.S. Dist. LEXIS 18513, at *1 (S.D.N.Y. Oct. 15, 2003), aff'd, 98 Fed.Appx. 73 (2d Cir.2004). The Daily Show segment opens with a full-screen image from the Kane Show, showing the plaintiff dancing in a bikini. Id. at *1, 2003 U.S. Dist. LEXIS 18513 at *3. The Kane Show logo appears in the clip as it did in the original. Id. The full-screen image remains on the screen for less than a second then shrinks to the lower corner, and three other clips appear to form a video collage. Throughout this introduction, the title "Public Excess" flashes across the screen, accompanied by music. Id. The "Public Excess" segment mocks the public access programs sampled in the video collage by "presenting and commenting on clips of those shows," in the characteristic format of the Daily Show. Id. at *1-2, *3-4, 2003 U.S. Dist. LEXIS 18513 at *4, *10. The accused work was unlike those in traditional parody cases in that "the use of plaintiff's clip ... did not involve an altered imitation of a famous work but the presentation of an obscure, original work in a mocking context." Id. at *4, 2003 U.S. Dist. LEXIS 18513 at *10 (emphasis supplied). However, because the accused work used excerpts of the original work to ridicule it, parody analysis applied. The court reasoned, "[t]he only significance of deeming a work a parody is the concomitant determination that the work contains elements of commentary and criticism." Id. at *4, 2003 U.S. Dist. LEXIS 18513 at *11 (citing Campbell, 510 U.S. at 580, 114 S.Ct. 1164). Thus, "the important, if not dispositive, issue is whether [the] use of plaintiff's material amounted to comment or criticism." Id. Because the accused work ridiculed the original by using plaintiff's clip in a segment called "Public Excess" and adding derisive commentary, defendants "unquestionably used her material for the purpose of criticism." Id.

In this case, akin to Kane, the target of the parody is not a publicly-known work. While the Northland Video may be fairly well known in the family planning and counseling community, (see, e.g., Expert Report of Ruth Arick ("Arick Rep.") ¶¶ 22, 25, Docket No. 86), it is not a universal popular culture reference like "Oh, Pretty Woman," Dr. Seuss, or Barbie. Like the "obscure" television show in Kane, the Northland Video has a limited viewership. However, just as in Kane, where an audience unfamiliar with the Kane Show could still appreciate the parody in the Daily Show segment, here, a viewer unfamiliar with the Northland Video could nonetheless recognize that the accused Videos were meant to ridicule the original. While the Daily Show segment criticized the Kane Show by adding commentary and showing clips from the original set to music with the pun title "Public Excess," here, the accused Videos derided the original by adding images, Biblical citations, and music intended to contradict and ridicule the message of the Northland Video. In both cases, the defendants used portions of the original to "critically examine" it. 2003 WL 22383387, at *4-5, 2003 U.S. Dist. LEXIS 18513, at *12-13.

Similarly, in Rycraft, Incorporated v. Ribble Corporation, No. 97-1573-KI, 1999 WL 375610, at *8-12, 1999 U.S. Dist. LEXIS 6052, at *24-31 (D.Or. Apr. 26, 1999), a parody of a little-known work was entitled to fair use protection. In that case, Ribble, a cookie stamp manufacturer, copied the designs, themes, and configurations of the cookie stamps produced by its main competitor, Rycraft. Id. at *2, 1999 U.S. Dist. LEXIS 6052 at 5. Ribble also copied Rycraft's marketing materials, creating a sell sheet that displayed 48 of its designs in a grid pattern and sequence substantially similar to Rycraft's "Top 40 list." Id. at *3, 1999 U.S. Dist. LEXIS 6052 at *9. Of the 48 Ribble cookie stamps, 41 were substantially similar in design and [976] theme as the Rycraft products. Id. Criticizing Ribble's tactics, Rycraft created a flyer imitating Ribble's sell sheet. For each of the cookie stamps Ribble had copied, Rycraft placed an image of the Ribble stamp with the name of the corresponding Rycraft cookie stamp below the image. The top of the flyer read, "Has another company shown you our designs lately? Well, here are the originals — Robin Rycraft's designs most of which appeared on a Top 40 List we published for you." Id. at *3-4, 1999 U.S. Dist. LEXIS 6052 at *10. Rycraft conceded that it did not know whether the customers to whom it sent flyers had seen the Ribble sell sheet, and thus the object of the parody was not necessarily well-known by its anticipated audience. Id. at *4, 1999 U.S. Dist. LEXIS 6052 at *11. Nevertheless, the flyer was a protected parody because it used elements of the original to criticize Ribble for copying Rycraft's product line. See id. at *3-4, *9, 1999 U.S. Dist. LEXIS 6052 at *10, *26. Thus, the court implicitly held that the object of a parody need not be a well-known work.

This Court agrees with the Kane and Rycraft courts that fair use protection is not limited to parodies of well-known works. Parody promotes the creativity copyright law is designed to foster whether the parodied work is a household name or completely unknown. The benefit of social commentary and criticism is not confined to works indicting the former. Just as the Campbell decision cautioned courts against evaluating a parody's success, so too should courts refrain from evaluating the popularity of the parodist's target. Campbell, 510 U.S. at 582, 114 S.Ct. 1164 (quoting Yankee Publ'g v. News Am. Publ'g, Inc., 809 F.Supp. 267, 280 (S.D.N.Y.1992) (Leval, J.) ("First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed.")). Indeed, courts have no business circumscribing the parodist's victim.

In sum, the Court finds that the accused Videos are parodies of the Northland Video.

Northland further asserts that even if the accused Videos are parodies, they are not sufficiently transformative to warrant fair use protection. (Pl.'s Mot. Br. 13-15.) Finding parody, alone, does not automatically trigger fair use protection. See Campbell, 510 U.S. at 579-81, 114 S.Ct. 1164 (finding that "parody may or may not be fair use"); Fisher, 794 F.2d at 434 n. 2. To be transformative, "[t]here must be real, substantial condensation of the materials, and intellectual labor and judgment bestowed thereon; and not merely the facile use of the scissors; or extracts of the essential parts, constituting the chief value of the original work." Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110 (9th Cir.2000) (quoting Folsom v. Marsh, 9 F.Cas. 342, 345 (C.C.D.Mass.1841)).

Northland contends that Defendants' use of the Northland Video was not sufficiently transformative because they used substantial verbatim sections of the original and did little to alter the work as a whole. Further, Northland argues that this case is distinguishable from other parody cases in that the defendants in Mattel^[8] and Campbell^[9] mimicked or manipulated [977] the original work to create their parodies, whereas here, Defendants used segments of the original work verbatim and merely spliced it with other footage to form the new work. Therefore, Northland asserts, Defendants' use was not sufficiently transformative to justify the substantial use of verbatim clips from the Northland Video. While courts have not addressed verbatim use of copyrighted video content in the parody branch of the fair use doctrine, it is well established that "wholesale copying does not preclude fair use per se." A & M Records Inc. v. Napster, Inc., 239 F.3d 1004, 1016 (9th Cir.2001) (quoting Worldwide Church, 227 F.3d at 1118). Under "certain circumstances," a use is fair even when the protected work is copied in its entirety. Id.; see, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 449-50, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) (acknowledging that fair use of time-shifting necessarily involved making a full copy of a protected work), superceded on others grounds by statute as stated in Realnetworks, Inc. v. DVD Copy Control Ass'n, 641 F.Supp.2d 913 (N.D.Cal.2009); Mattel, 353 F.3d at 803 n. 8 (noting that the Ninth Circuit has held that "entire verbatim reproductions are justifiable where the purpose of the work differs from the original"); Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d Cir.2006) (finding that use of reproductions of Grateful Dead concert posters in a biography of the band was fair use because they were "historical artifacts" within context of the biography and thus had a transformative use).

The "certain circumstances" of this case justified Defendants' verbatim copying of Northland's work, given the difficulties of parodying a generally unfamiliar video. First, Defendants had to make a full copy of the Northland Video in order to distill it into the segments they would need to create their own videos. Second, Defendants' verbatim use of segments of the original work was necessary to create the parody because the Northland Video is not a highly recognizable work ingrained in the collective psyche of Defendants' audience. Unlike "Pretty Woman" or Barbie, where a parodist can comment on the original with a broadly suggestive allusion, here, Defendants could not effectively comment on the Northland Video without showing verbatim excerpts that captured the essence of the message and the mannerisms of the narrator.^[10] While the transformation of the Northland Video may have been more rudimentary^[11] than the transformation of the song lyrics [978] in Campbell or the photographs of Barbie in Mattel, Defendants fundamentally changed and commented on the copyrighted work.^[12] Compare Mattel, 353 F.3d at 800, with Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., 923 F.Supp. 1231, 1243 (N.D.Cal.1995) (finding that the defendant's use of copyrighted Scientology materials was not transformative because, despite his purported purpose of criticizing the Church, he republished the original work with little or no added commentary or criticism). The new background soundtrack, the visuals, and the juxtaposition of the new video clips with the original creates an entirely different impact on the viewer. Thus, the accused Videos are transformative.

The "purpose" factor also requires the Court to consider whether the defendant's use is commercial or noncommercial. See 17 U.S.C. § 107; Harper & Row, 471 U.S. at 562, 105 S.Ct. 2218. "The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price." Id. In determining whether the purpose for the infringing work was "profit," "monetary gain is not the sole criterion... particularly in [a] ... setting [where] profit is ill-measured in dollars." Worldwide Church, 227 F.3d at 1117 (alteration in original) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1324 (2d Cir.1989) (holding that a professor's verbatim copying of an academic work was not fair use, in part because a professor can "profit" by gaining recognition among his peers and authorship credit)). In Worldwide Church, the Ninth Circuit concluded that the Philadelphia Church of God "unquestionably" profited from the use of Worldwide Church of God's publication because it provided them with their core text essential to its members' religious observance, thereby enabling the ministry to grow. 227 F.3d at 1118.

In this case, Defendants at least in part profited from the creation and dissemination of the accused Videos. First, it is undisputed that Cunningham used the CBR Videos for fundraising and spreading CBR's message. Cunningham testified that he shows the CBR Videos "every time" he does a fundraising pitch because the CBR Videos are "part of what we are doing," and CBR's "entire existence hangs on the goodwill of donors who want to know what we're doing and want to know what our challenges and burdens are...." (Cunningham Dep. 133:24-134:5, 156:18-21.) Defendants argue that this fact is immaterial because Cunningham declared that any request for donations "remotely related" to the accused Videos were made after Northland filed this suit for the sole purpose of defraying litigation costs. (Defs.' Opp'n to Pl.'s MSJ 16 (citing Cunningham Decl. ¶ 11).) However, Cunningham's Declaration is inconsistent with his deposition testimony, in which he stated that he could not remember whether he used the CBR Videos in his pitches prior to this lawsuit. (Cunningham Dep. 156:7-8, 157:14-18.) Moreover, Defendants have cited no authority for their position that using an accused work to solicit donations for a litigation defense of that work is exempted commercial activity.^[13]

[979] Second, even if Defendants did not use these videos directly for fundraising, the Videos generated traffic to the anti-abortion websites on which they were posted and incited discussion on the sites' message boards. Defendants appropriated the copyrighted material to advance their own message, and therefore derived a benefit from their use. Generating traffic to one's website or conveying one's message effectively using copyrighted material is within the type of "profit" contemplated by Worldwide Church. Moreover, that users on the CBR website could make donations through a link on the same page where the Videos were posted is further evidence that the Defendants profited from the Videos. Henley, 733 F.Supp.2d at 1159. But see Righthaven, LLC v. Jama, No. 2:10-CV-1322 JCM (LRL), 2011 WL 1541613, at *2-3, 2011 U.S. Dist. LEXIS 43952, at *7-8 (finding it immaterial in the commercial use analysis that a defendant non-profit organization solicited donations on its website where the accused material was posted).

However, as noted earlier, the commercial aspects of the accused work are less important when the work is significantly transformative. Campbell, 510 U.S. at 579, 114 S.Ct. 1164. Indeed, "even works involving comment and criticism `are generally conducted for profit in this country.'" Mattel, 353 F.3d at 803 (quoting Campbell, 510 U.S. at 584, 114 S.Ct. 1164). Here, Defendants used Northland's work to criticize it-not to "exploit its creative virtues." Blanch, 467 F.3d at 257. On balance, the profit Defendants gained from the use of Northland's copyrighted material is a minor part of the analysis in light of the transformative use of the material.

2. Nature of Copyrighted Work

The second statutory factor, "the nature of the copyrighted work," acknowledges that creative works are "closer to the core of intended copyright protection" than informational and functional works, "with the consequence that fair use is more difficult to establish when the former works are copied." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. However, this factor is not "terribly significant in the overall fair use balancing," Seuss II, 109 F.3d at 1401, particularly in the parody context where a creative work is frequently the nub of the parodist's comment or criticism, see Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (finding the second factor unlikely to "help in separating the fair use sheep from the infringing goats in a parody case").

The copyrighted work in this case is informational, functional, and creative. Northland made creative choices in writing the script and staging the narrator in its Video. The Video is also informational and functional because it promotes the guidance program at Northland and spreads Northland's "good women" message. The artistic decisions Northland made in articulating its message, staging the scene, and adding inspirational quotes and calming music makes this work "closer to the core of intended copyright protection" than purely informational or functional works. Accordingly, this factor weighs slightly in favor of Northland.

3. Amount and Substantiality of Portion Used

In the parody context, the third factor turns on "the persuasiveness of a parodist's justification for the particular copying done, ... [;] the extent of permissible copying varies with the purpose and character of the use." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. The analysis of this factor will "also tend to address the fourth, by revealing the degree to which the parody may serve as a market substitute for [980] the original or potentially licensed derivatives." Id. at 587, 114 S.Ct. 1164.

Parodies have more leeway under the third factor because a parody must take recognizable material from the original in order to convey its message. Campbell, 510 U.S. at 588-89, 114 S.Ct. 1164. Moreover, to be recognizable, the parodist generally must extract the "heart" of the original. Id. (noting that "[i]t would be difficult to see how the transformed work's parodic character would have come through if it did not copy the core of the original"). There is, of course, a limitation on the amount and substantiality of the original the parodist may use:

Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song's overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original.

Id. at 587, 114 S.Ct. 1164. The Ninth Circuit has adopted the "conjure up" test: "The parodist is permitted a fair use of a copyrighted work if it takes no more than is necessary to `recall' or `conjure up' the object of his parody." Seuss II, 109 F.3d at 1400 (collecting cases in accord). But see Mattel, 353 F.3d at 804 ("We do not require parodic works to take the absolute minimum amount of the copyrighted work possible.")

Northland argues that even if the accused Videos are parodies, Defendants have taken too much of the Northland Video to invoke fair use protection. The CBR Videos use 2 minutes and 2 seconds of the Northland Video's 4 minute and 41 seconds of footage, or 43 percent of the Northland Video. The CBR I Video is slightly under 4 minutes long, and the CBR II Video is approximately 4 minutes and 13 seconds long. Thus, the CBR Videos are between 48 and 53 percent Northland's original work. The TAG Video is 1 minute and 17 second long, and the entire audio track is taken from the Northland Video-27 percent of the Northland Video's audio track. Northland asserts that Defendants' use is not fair because it is excessive in relation to the total length of the accused Videos, and it plucks from the core of the copyrighted material.

However, there is no "fixed limit" on the amount a parodist may copy. Fisher, 794 F.2d at 439. Indeed, "`substantial copying by a defendant, combined with the fact that the portion copied constituted a substantial part of the defendant's work' does not automatically preclude the fair use defense." Id. at 438 (quoting Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 756 (9th Cir.1978)). There are three considerations important to determining whether a taking is excessive under the circumstances. Fisher, 794 F.2d at 439. First, courts consider the degree of public recognition of the original work. Id. Close copying is impermissible when the work is well-known or familiar to the audience. Compare Walt Disney Prods., 581 F.2d at 756 (close copying of Disney characters impermissible), with Rycraft, Inc., 1999 WL 375610, at *10, 1999 U.S. Dist. LEXIS 6052, at *28 (close copying of cookie stamp sell sheet permitted because it was "essential to plaintiff's comment or criticism"). Second, courts evaluate the "ease of conjuring up the original work in the chosen medium." Id. For example, in Air Pirates, defendants created a subversive comic book copying Disney characters near-verbatim. 581 F.2d at 757-58. The court found that defendants "took more than was necessary to place firmly in the reader's mind the parodized work and those specific attributes that [were] to be satirized," noting that graphic design was a relatively easy medium for parody. Id. The court opined [981] that other media, such as song or speech, could have more fair use leeway, given the greater difficulty in mimicking that media. Id. Third, the court analyzes the focus of the parody, i.e. whether the overriding purpose was to parody the original or whether it had another purpose. Fisher, 794 F.2d at 439; see Campbell, 510 U.S. at 588, 114 S.Ct. 1164.

In this case, the Fisher factors militate in favor of Defendants. First, because the Northland Video is not well-known or familiar to the public, Defendants had to use a significant portion of it for the audience to appreciate its parodic nature. Unlike the universally recognizable Disney characters in Air Pirates, Defendants needed more than a mere allusion to the Northland Video to effectively parody it. Second, the Northland Video is not easy to conjure up in a sound byte or a single image. While the Ninth Circuit has not specifically opined that video or film is a difficult media to parody, the challenges of parodying video are closer to song or speech than graphic design. Akin to a song or speech, with parody of video there is a "special need for accuracy" that provides some license for a "closer" parody. Fisher, 794 F.2d at 439. Just as a would-be parodist loses the likeness of a song if she substantially varies the music or meter of the original, a would-be parodist loses the likeness of a film if he substantially varies the script or setting of the original. It follows that video, like song and speech, should be afforded greater leeway in determining whether a defendant borrowed in excess. Moreover, the Court also considers the difficulty of "conjuring up" the message of a little known video without resorting to use of that video. See Campbell, 510 U.S. at 589, 114 S.Ct. 1164. While five seconds might be sufficient to capture the iconic image of Marilyn Monroe in a billowing skirt standing over a vent, the challenge presented in parodying the Northland Video is at the other end of the spectrum.

Third, as discussed supra section B.1, the overriding purpose of the accused Videos was to parody the original. While the accused Videos may have commented on the broader abortion debate or may have helped solicit patronage for CBR, these effects were incidental to the primary purpose of parodying Northland's Video. Additionally, the fact that the accused Videos were not a market substitute for the Northland Video weighs in Defendants' favor. Northland likens this case to Harper & Row, noting that in both cases the copied material played a "key role in the infringing work." (Pl.'s Mot. Br. 18 (citing 471 U.S. at 566, 105 S.Ct. 2218).) In Harper & Row, President Ford contracted with Time Magazine for prepublication excerpts from his memoirs. Harper & Row, 471 U.S. at 541, 105 S.Ct. 2218. Before Time published the story, Nation Magazine acquired a copy of the memoir manuscript and "scooped" the story, paraphrasing and copying significant portions at the heart of the memoir. Id. The fair use defense was not available because the purpose of the news story was to exploit copyrighted work without licensing it, and the effect on the market was great, given that Nation usurped Time's exclusive and valuable right of first publication. Id. at 562-63, 105 S.Ct. 2218; see also Elvis Presley Enters. v. Passport Video, 349 F.3d 622, 629 (9th Cir.2003), overruled on other grounds as stated in AFL Telecomms. LLC v. SurplusEZ.com, No. CV11-1086-PHX-DGC, 2011 WL 5547855, *2, 2011 U.S. Dist. LEXIS 132055, *5-6 (D.Ariz. Nov. 15, 2011). In contrast, here, Defendants did not usurp the market for the Northland Video, and the accused Videos certainly are not a market substitute. Moreover, unlike Nation Magazine, Defendants did not evade a licensing agreement.

[982] In sum, the purpose of the parody militates in favor of finding fair use.

4. Market Harm

Under the "market effect" factor, the Court focuses on the extent to which the Defendants' work usurps the potential market for the original or its derivatives. Campbell, 510 U.S. at 592, 114 S.Ct. 1164. It is not relevant that a use may damage the original's value through criticism. Id. at 591-92, 114 S.Ct. 1164; Bourne Co. v. Twentieth Century Fox Film Corp., 602 F.Supp.2d 499, 510 (S.D.N.Y.2009) ("If a parody of the original work would usurp the market for licensing other comedic uses of the original work, then all parodies would fail under this prong of the analysis."). Courts must distinguish between "biting criticism that merely suppresses demand and copyright infringement, which usurps it." Campbell, 510 U.S. at 592, 114 S.Ct. 1164 (quoting Fisher, 794 F.2d at 438) (alterations omitted).

This analysis requires consideration of more than just the market effect of the particular infringement at issue. Courts are to consider "`whether unrestricted and widespread conduct of the sort engaged in by the defendant ... would result in a substantially adverse impact on the potential market' for the original." Id. at 590, 114 S.Ct. 1164 (citation omitted). The burden is on the defendant to "bring forward favorable evidence" that potential markets will not be harmed. Dr. Seuss II, 109 F.3d at 1403.

In this case, the harm Northland claims to suffer is not cognizable because it stems from an "aim at garroting the original," not a usurpation of the original's market. Campbell, 510 U.S. at 592, 114 S.Ct. 1164. Northland asserts that the accused Videos have diminished the value of the Northland Video and have terminated all conversations with potential licensees. While this is no phantom injury, it is not recognized by the Copyright Act. Campbell, 510 U.S. at 591-92, 114 S.Ct. 1164 ("We do not, of course, suggest that a parody may not harm the market at all, but when a lethal parody, like a scathing theater review, kills the demand for the original, it does not produce a harm cognizable under the Copyright Act.") Furthermore, it is unfathomable to think that the accused Videos are a market substitute for the Northland Video. The purposes and messages of the two are diametrically opposite.

In sum, the accused Videos cause no cognizable market harm to the Northland Video. Accordingly, this factor weighs in favor of Defendants.

5. Aggregate Assessment

The fair use analysis involves a delicate balancing of the four factors with an eye towards the purposes of copyright. "The doctrine has been said to be `so flexible as virtually to defy definition.'" Princeton Univ. Press v. Mich. Document Servs., Inc., 99 F.3d 1381, 1392 (6th Cir.1996) (quoting Time Inc. v. Bernard Geis Assocs., 293 F.Supp. 130, 144 (S.D.N.Y.1968)). The case-by-case analysis resists bright-line determinations and the resulting decisions inevitably represent a sort of rough justice.

In this case, the balance of the factors weighs in favor of finding fair use. While the accused works have some commercial use, their transformative character substantially eclipses that consideration. Thus, the first factor tips in favor of Defendants. Because the Northland Video is, at least in part, a creative work, the second factor militates in favor of Northland. The third factor weighs in favor of Defendants because they did not use an excessive amount of the Northland Video to create their parody, in light of the Fisher factors. Finally, the fourth factor also weighs in favor of Defendants because the accused Videos did not create a cognizable market injury to the Northland Video.

[983] Though Northland many have suffered pecuniary or reputational losses as a result of the accused Videos, those injuries are not recognized under the Copyright Act. On balance, Defendants' use of the Northland Video was fair.

C. Vicarious and Contributory Infringement

If a use of copyright is deemed to be fair, the use "is not an infringement of copyright." 17 U.S.C. § 107. Because the Court finds that Defendants' use of the Northland Video was fair, Defendant did not infringe Northland's copyright as a matter of law. Accordingly, the Court need not consider Northland's claim of vicarious or contributory infringement.

IV. Conclusion

For the foregoing reasons, Defendants' Motion for Summary Judgment is GRANTED, and Northland's Motion for Summary Judgment is DENIED.

IT IS SO ORDERED.

[1] Northland requests that damages be assessed at a later date. (Pl.'s Mot. Br. 1.)

[2] The Court notes that the month and year during which Northland allegedly posted the Northland Video is inconsistent in the record. The FAC and Northland's motion brief state that it was posted in November 2009, while Ms. Chelian testified that she posted it in November 2010 (Chelian Dep. 40:8-11), and Northland's Statement of Unconverted Facts ("Pl.'s SUF") states that it was posted in January 2010, (Pl.'s SUF, Docket No. 46). It is undisputed, however, that it was available on the Internet sometime before 2011.

[3] Just as it sounds, Pro-LifeTube.com is a website that hosts videos with pro-life and anti-abortion themes. (Bullis Dep. 26:14-27:11.) Users can upload videos and watch other users' videos on the site. (Id. at 27:1-11.)

[4] Northland's counsel sent these notices pursuant to the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512, which provides that a "service provider," such as Pro-LifeTube.com and the CBR website, is not liable for copyright infringement for material posted on its website by others so long as it promptly removes the material upon receiving a notification of infringement from the copyright holder. 17 U.S.C. § 512(c).

[5] After reviewing the pleadings in the cross motions, the Court invited each party to submit a supplemental brief of no more than five pages addressing whether the Court could decide this case as a matter of law on the present factual record. (Docket No. 83.) Both parties submitted briefs answering affirmatively. (Defs.' Supp. Br., Docket No. 84; Pl.'s Supp. Br., Docket No. 85.)

[6] A parody that "more loosely targets an original" than the parody presented in Campbell "may still be sufficiently aimed at an original work to come within [the Court's] analysis of parody." Campbell, 510 U.S. at 581, 114 S.Ct. 1164; see also MCA, Inc. v. Wilson, 677 F.2d 180, 185 (2d Cir. 1981) (holding that "a permissible parody need not be directed solely to the copyrighted song but may also reflect on life in general"). Thus, even if this Court found that the accused Videos broadly criticized the pro-choice position in addition to the Northland Video, the analysis would be in accord with Campbell.

[7] At least one circuit court construing Campbell has held that parody is commentary or criticism that requires neither "comic effect" nor "ridicule." Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1268-69 (11th Cir.2001). The Eleventh Circuit reasoned:

The Supreme Court's definition of parody in Campbell, however, is somewhat vague. On the one hand, the Court suggests that the aim of parody is `comic effect or ridicule,' but it then proceeds to discuss parody more expansively in terms of its `commentary' on the original. In light of the admonition in Campbell that courts should not judge the quality of the work or the success of the attempted humor in discerning its parodic character, we choose to take the broader view. For purposes of our fair-use analysis, we will treat a work as a parody if it aims to comment upon or criticize a prior work by appropriating elements of the original in creating a new artistic, as opposed to scholarly or journalistic, work.

Id. (internal citations omitted). Arguably, however, the work at issue in Suntrust Bank did, in fact, ridicule or attempt to ridicule the original work. In that case, the court confronted humorless parody in a book that drew upon the characters and story line from "Gone with the Wind" to critique the original work and the depiction of slavery in the Civil-War-era American South. Id. at 1259. The court held that the accused work was a parody because it imitated the original to make a "specific criticism of and rejoinder to the depiction of slavery and the relationship between blacks and whites in [`Gone with the Wind']." Id. at 1269. While the court did not mention ridicule in its parody analysis, the work likely could have been reasonably perceived as ridiculing "Gone with the Wind," and thus it was probably a parody even under a narrower construction of Campbell. In this case, the Court need not decide whether "comic effect or ridicule" is a necessary part of parody because the accused Videos are undoubtedly aimed at ridiculing the Northland Video. As admonished in Campbell and Suntrust Bank, the Court does not evaluate the success of the ridicule, but looks only at the aim of the work and a reasonable perception of the work. Accordingly, the accused Videos fall within both the broader and narrower constructions of "parody."

[8] In Mattel, Forsythe used entire Barbie dolls and dismembered parts, but incorporated them in the vignettes he created such that a new work emerged "imbued with a different character." 353 F.3d at 804. Forsythe's "lighting, background, props, and camera angles all serve to create a context for Mattel's copyrighted work that transform Barbie's meaning." Id. at 802.

[9] In Campbell, 2 Live Crew took the most recognizable part of "Pretty Woman," but it added "scraper" noises and overlays to the music and changed the lyrics, thereby transforming it. 510 U.S. at 589, 114 S.Ct. 1164. Thus, that case was not a situation where "a substantial portion" of the parody itself was composed of a "verbatim" copying of the original. Id.; see also Abilene Music, Inc. v. Sony Music Entm't, Inc., 320 F.Supp.2d 84, 89 (S.D.N.Y.2003) (finding fair use of the song "What a Wonderful World" in rapper Ghostface Killah's sarcastic song "The Forest," which used the same melody and imitated the lyrics of the original to portray a corrupt and venal world, thereby ridiculing the "unrealistically uplifting" message of the original).

[10] This argument is closely related to the "amount and substantiality of use" analysis, discussed infra section B.3.

[11] In the TAG Video, Defendants alternate between clips from the Northland Video and footage of alleged abortions. The narrative from the Northland Video continues throughout the TAG Video. The CBR I Video is slightly more transformed in that Defendants added their own music to accompany the images of the alleged abortions, and the Video begins with a Biblical quotation. The CBR II Video is the most transformed, adding a George Orwell quotation to the beginning of the CBR I Video. The Court finds that each of the accused Videos is sufficiently transformative because they edit the original and add content in such a way that dramatically changes the meaning of the work, thereby creating a new work that comments on the original.

[12] Further, "[w]hether the parody is in good taste or bad, fails or succeeds," is inconsequential in the fair use analysis. Campbell, 510 U.S. at 582-83, 114 S.Ct. 1164.

[13] Defendants cite Righthaven, LLC v. Jama, No. 2:10-CV-1322 JCM (LRL), 2011 WL 1541613, at *2-3, 2011 U.S. Dist. LEXIS 43952, at *7-8 (D.Nev. Apr. 22, 2011), for the proposition that the solicitation of donations on a non-profit organization's website is immaterial to the commercial use analysis. (Defs.' Opp'n to Pl.'s MSJ 16.) However, that case does not hold that fundraising for a litigation defense of the accused work is protected under copyright law. The Court finds no reason to draw a distinction between pre- and post-litigation commercial use of infringing works.