Notes & Comment
Vol. 2003, No. 1
(View Archives)
Fair use of copyrighted works and the de minimus defense to infringement: The King lives, and the
Beastie Boys too!
The U.S. Court of Appeals for the Ninth Circuit, based in San Francisco, issued two recent opinions in celebrity cases regarding the proper use of a third party’s copyrighted material. Neither decision breaks new ground, but may -- or may not -- help commercial content developers better understand the rules that govern unlicensed use of copyrighted material. Newton v. Diamond, 03 C.D.O.S. 9581 (November 4, 2003) ("Newton") and Elvis Presley Enterprises, Inc. v. Passport Video, 03 C.D.O.S. 9627 (November 6, 2003) ("Presley").(Opinions available at www.ca9.uscourts.gov, Opinions tab, search by name or month).
Newton v. Diamond: De Minimus Usage
The hip-hop and rap group Beastie Boys licensed a sound recording ("Choir") of Jazz flutist and composer James W. Newton, but they did not obtain a license to "Choir’s" underlying composition. The rappers then incorporated a six-second, three-note portion of the "Choir" composition in their song "Pass the Mic," a practice called "sampling" in the recording industry. Claiming that their unlicensed sampling was unlawful, Newton sued for copyright infringement, but the trial court granted summary judgment for the Hip-Hopsters. The 2-1 majority affirmed that grant of summary judgment.
The U.S. Copyright Act, 17 U.S.C. Sec. 101, et seq. (the "Act") does not expressly recognize a defense of de minimus copying. However, because the Act requires "substantial similarity" between the copyrighted material and the infringing work, the de minimus defense is based upon the premise that insignificant copying cannot amount to substantial similarity. As the Court said, "The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law."
Several basic copyright issues are presented in Newton. First, copyrights can exist in several manifestations of the same creation (e.g., a sound recording, its performance and the underlying composition all can be separate works, each with its own copyright). Licensed use of one manifestation, such as a sound recording, does not necessarily authorize use of another form, such as the underlying composition. Thus, licenses must be comprehensive so they encompass all desired uses. Second, insubstantial literal copying is not necessarily prohibited, particularly if the quantitative and qualitative portion of the copied work that is used is insignificant in proportion to the copied work as a whole. Here, after a detailed review of the findings below, the Court concluded that the Beastie Boys’ "sampling" of the underlying Newton "Choir" composition in their new recording was insubstantial relative to the entire Newton composition. Finally, Newton and similar de minimus cases do not necessarily insulate from infringement liability those who might include even small portions of copyrighted material in new works. In other words, the de minimus defense to copyright infringement is very fact-specific, only available case-by-case depending on the circumstances. There is no bright line test to guide us about de minimus usage.
Elvis Presley Enterprises, Inc. v. Passport Video: Fair Use
Owners of various Elvis Presley properties sued the producer of a sixteen-hour video documentary about Presley’s life and career. The producer incorporated various copyrighted video, audio, and photographic works by and about The King without a license, claiming that the documentary value of its product amounted to fair use.
Unlike the de minimus defense, the Act specifically recognizes a fair use defense to copyright infringement, typically related to comment, criticism, news, scholarly research, classroom use and the like. A court must weigh four elements each time fair use is raised: (i) the purpose and character of the use (e.g., commercial or non-profit), (ii) the nature of the copyrighted work, (iii) the amount and substantiality of the portion copied in relation to the entire work, and (iv) the effect on the market for the copied work. As with the de minimus defense, fair use cases are very fact specific and require a detailed review of the circumstances.
In Presley, the Ninth Circuit, in a sharply divided 2-1 decision, affirmed a ruling by the lower court granting a preliminary injunction to the copyright owners, holding that the producer was not entitled to claim fair use. The majority found that while it was "a close call" on each of the four elements of the defense, the lower court had properly rejected fair use by the producer. The Elvis documentary had borrowed heavily from copyrighted material that originated from many sources and came in many forms (video, audio, photographs). Moreover, the use of such copyrighted material did not substantially "transform" the work into something new that would qualify for fair use. The documentary primarily had a commercial purpose, and certain excerpts, representing "the heart" of the copied work, were used "repeatedly." Lastly, the documentary would have the effect of lessening the commercial value of the copied materials. Indeed, the Presley interests had not licensed some of the materials to the producer because they had planned their own documentary of Elvis’s 50th anniversary in show business.
Conclusion
These cases do not help us predict when the unlicensed use of copyrighted material is considered fair use or is subject to the de minimus defense. Both Newton and Presley were decided by 2-1 margins, exposing sharply different views even among the judges themselves. However, they do inform commercial content developers that using any third party copyrighted material without a license is always a risky course.
© Matthew Joseph 2003. Law Offices of Matthew Joseph, San Mateo, California, practices in the areas of intellectual property licensing, commercial real estate leasing, and corporate and business transactions. No legal advice is intended by the information provided herein and recipients should independently consult counsel before taking any action related to this subject matter.