Professor Dennis Karjala
December 8, 1997
TIME: 1 HOUR
This examination consists of two parts. Part I is a single essay question that you are to answer in bluebooks (1 hour). Part II is a set of short-answer essay questions that you are to answer in the space provided on the question sheets themselves (2 hours).
You have 1 hour to complete Part I, after which it will be collected and Part II distributed. You will then have 2 hours to complete Part II. The final grade will be determined by weighing Part I 1/3 and Part II 2/3, although those weights are subject to small variation depending on the quality of specific answers and/or overall performance.
You are permitted to have with you and to use during the examination your textbook, the statutory supplement, any class handout materials, your class notes, and any other written materials made by you or your study group (not photocopied from printed materials).
On both parts, please write legibly. On Part I, please write on one side of a bluebook page only. Please double space.
The question on Part I asks you, as federal district court judge, to decide whether copyright rights have been infringed by acts given in the fact pattern and to write an opinion explaining your reasoning. In carrying out this analysis, do not begin with an elaborate discussion of the facts. Go directly to your analysis and your reasoning, bringing in the facts as they relate to relevant legal doctrine.
GOOD LUCK !
Question (1 hour)
Rob Ryan is and has been from the 1960's a popular folk song writer and balladeer. One of his songs from the 1960's, entitled Flowing Down the River, was extremely popular when it was first recorded by Rob and distributed on phonorecords. Since then, of course, many other singers have recorded the song, but Rob’s rendition remains the “definitive” version for most people who came to know the song in that era. You may assume that Rob owns the copyright in the song as a musical work.
Forvet is a large automobile manufacturer. It has begun planning an advertising campaign aimed at upper middle class people who were in their teens or early twenties in the late 1960's, when Rob’s song was first popular. The television ads will feature a group of people now 40-55 years old who gather together to reminisce about “the good old days.” The actors playing these roles will use phrases and other props reminiscent of the earlier era, usually with popular music from that era playing prominently in the background. The part of each musical number that will be heard when the ad is viewed is typically only the best known part, like the chorus. The actors will discuss how much things have changed in the interim but always end up with the catch-phrase “But some things never change. Like good music, the quality of Forvet vehicles is always the best!” Forvet wants to use Flowing Down the River as background for the first of its TV ads, believing that this was the “signature” song of the era and that nothing else could really capture the atmospheric flavor they wish to create.
For most of its planned ads, Forvet has been successful in obtaining permission to use the music that serves as background for each ad (usually paying a royalty on the order of $250,000). Rob, however, has refused Forvet’s requests to license such use to Flowing Down the River, on the ground that advertising is demeaning to him and his music. Given the popularity of the song, however, Forvet felt that its campaign just won’t work without this particular song. Consequently, notwithstanding Rob’s refusal to grant permission, Forvet hired a “sound alike” to sing the song so that it sounds very much like Rob’s version on his popular recording. Forvet has now made and aired its first ad, using this sound-alike singer to sing the chorus to Flowing Down the River as background music. A large number of viewers have indicated that they found the Forvet ad very tasteful and much more pleasant to watch than normal TV advertising.
Rob has sued Forvet for copyright infringement, seeking both damages and an injunction against further broadcasts of the ad. During discovery, Forvet has admitted that, while it wanted to make a series of ads that were tasteful and would improve the “signal to noise” ratio on U.S. television, its ads were designed almost completely with the goal of encouraging people to buy Forvet cars. The case has come to you, as district court judge, after trial on the merits (without a jury) has disclosed the facts set forth above. Write an opinion deciding the case. Do not consider issues that might arise out of a possible copyright in the sound recording Rob made of his song. (For one thing, sound recordings were not copyright protected until 1971, and such protection is not retroactive.) Moreover, do not consider trademark or right-of-publicity law.
Forvet’s ad potentially infringes two of Rob’s copyright rights. It has made a copy of the song (at least the chorus) by fixing the ad on film or video, including the sound-alike’s version of the chorus. If this is not fair use, this activity infringes either Rob’s section 106(1) right to reproduce the work in copies or his 106(2) right to prepare derivative works. Moreover, by playing the ads on television, Forvet has made a public performance of (part of) Rob’s protected work, infringing Rob’s rights under 106(4) unless such use was fair. We note in passing that there is no § 115 compulsory license issue here, because Forvet’s use was not to distribute phonorecords to the public but rather to create an audiovisual work. (Note that section 101 defines an “audiovisual work” as including the “accompanying sounds” to the images.) Nor can the chorus be considered “de minimis,” as it is the best known and most important part of Rob’s song. Consequently, Forvet has infringed unless its use of Rob’s musical work was a fair use.
[Note: Many student answers wasted half or more of their writing time on infringement issues--dissection versus “look and feel,” general discussion of idea/expression, etc. When there is more than de minimis verbatim copying of a protected work, it is always infringing unless the use is fair or some other defense is available.]
Fair use requires analysis of the four factors set forth in § 107. I note first that a TV ad does not fit within any of the types of works listed in the preamble to the statutory provision as potentially qualifying for fair use. This does not automatically mean that Forvet’s use is unfair, as the Supreme Court has said that we must look to the statutory factors in every case. Still, if the other factors are in equipoise, perhaps we must return to consider this point more fully.
The first factor is the nature and character of the use, including whether it is commercial or noncommercial. As recent cases have pointed out, this factor has two prongs: Whether the use was commercial and whether it was “transformative.” Here the use is very heavily commercial. Forvet’s ads may someday enter into the Museum of Americana at the Smithsonian, but for now Forvet is interested in selling automobiles and its ads are designed solely with that end in mind. This prong therefore weighs against Forvet and in favor of Rob, although the Supreme Court in Campbell has stated that a commercial use in not automatically unfair, especially if the use is transformative.
Is this use transformative? In the limited sense of whether Forvet did anything to the song itself to change it from Rob’s version, the answer is clearly “No.” In fact, Forvet wanted to use Rob’s version itself and was indeed willing to pay a good deal of money for the right to do so. The court in the shareware case we discussed in class held that such a use was not transformative, even if the exactly rendered work was combined with other things to make a new package that, as a package, had added value for consumers. However, this use is perhaps transformative in a broader sense. Rob’s song is a stand-alone piece of music that is normally enjoyed in its own right, by itself. Here, the song is used as a prop to bring back memories of an earlier time. Although it is not parody, the use of the song is an indirect way a comment on the song--not a critical comment, to be sure, but a comment of respect to its status and importance to U.S. culture of the era. The ad “targets” the song as a cultural icon and uses it very effectively in bringing viewers into the atmosphere Forvet is trying to create. While the Campbell Court emphasized the need to use the work to comment on it for critical purposes, I see no essential difference if the need is to use the work for other purposes. If, for example, Forvet were simply making a film of the 1960's, it might be impossible to make some crucial scenes (parties, antiwar activities, etc.) without some similar reference and use of Rob’s song, which has come to be so closely identified with the era. Here the purpose is to sell cars rather than make a “legitimate” film, but I do not believe that makes the use less “transformative.”
The use is also transformative in another sense. Although Forvet’s use was admittedly for the overriding commercial purpose of selling cars, it did try to elevate the taste level of U.S. television advertising. As judges in copyright cases, we must be ever mindful of the Holmes dictum not to impose our artistic tastes on others or the public in general, but the fact that many viewers found the Forvet ads tasteful and more pleasant to watch than typical TV ads is due, at least perhaps in part, to its use of music from an earlier era that has stood the test of time. Consequently, I find the first factor very closely balanced but with a slight edge to Forvet for the transformative use of Rob’s work. Much of the edge here comes from the fact that it would be very difficult to create the kind of setting sought by Forvet without the use of music (and similar props) from the era in question.
Factor two looks to the nature of the copyright-protected work. In this case, Rob’s song is within the traditional core of copyright--literature, art, and music. Although Rob’s work was published, which in itself helps Forvet’s fair use argument, the work is not a news report, scientific study, or historical analysis in which the scope of protection is “thin.” This factor favors Rob and argues against fair use.
Factor three looks to the substantiality of the taking in relation to the copyright-protected work as a whole. We note that a Forvet did not take the entire song but rather only the chorus. The courts have said, however, that this test must be qualitative and not merely quantitative, and here Forvet clearly took the most easily recognized and probably the most loved part of the song. Still, if this were a parody case, Forvet would have the right, under Campbell, to use at least enough to “conjure up” the protected work, and the chorus is certainly effective at doing that. How much more than mere conjuring up will be allowed depends on the nature of the use--the amount taken must in some sense be reasonable to achieve the legitimate purposes of the use. Here Forvet is trying to set a certain tone, by reminding people of what was popular at the time presented in its ad. When the use is transformative, as we have held this use is, it makes little sense to say that Forvet could use parts of the song that only a part of its audience would identify but not the part that is nearly universally known. The use here seems to be no more than reasonably necessary to achieve the purpose of the ad.
In connection with factor three, we note that some courts have also measured the substantiality of the taking in relation to the defendant’s work, not just the protected work. Here the use of the chorus from Flowing Down the River was clearly an important part of Forvet’s ad, but as we have said, the amount was reasonable in view of the legitimate purposes of the taking. The chorus was not the entire work created by Forvet, which was an audiovisual work involving many other elements besides the chorus from Rob’s protected song. Under this approach to substantiality as well, the taking seems within the bounds of reason.
The fourth factor, which the Supreme Court has said is the most important, looks to the effect the taking would have on the potential market for the work, including derivative markets the plaintiff is likely to enter. We note that Forvet makes at least a colorable claim that there was no real substitute, given its goal of evoking an earlier era nostalgically, and it seems even plausible that Forvet’s use might actually reawaken interest in Rob’s song and increase sales on phonorecords. On the facts shown, however, it is clear that large sums are available to copyright owners for the licensing of their songs for uses of the type made by Forvet here, indicating that this is a traditional derivative market that copyright owners interested in economic returns would likely wish to enter. If Forvet had used the chorus from Flowing Down the River without even attempting to license and pay “the customary fee” (to use the language of the Supreme Court in Harper & Row), and if we were to find that a fair use, it could operate as a serious disincentive to compose new and popular music and it would deprive such authors of a potential source of revenue that they have come to expect.
In this case, however, it is crucial that Forvet tried to license and was willing to pay the customary fee, but Rob refused to license. What we have, then, is a case of “market failure,” where the copyright owner’s refusal to license would, but for fair use, have the effect of depriving the public of a new and transformative use. Recognizing fair use under these circumstances would not deprive Rob Ryan or other authors of the economic value of the potential market for their works, because such a finding depends on a willingness to license at the customary rate. Consequently, factor four, on these facts, also favors Forvet and a finding of fair use.
It will be objected that Rob’s refusal to license was based on his estimate that for him or his works to be associated with commercial advertising would diminish both his and their reputation, and that the author should be able to assert complete control over how his or her works are used. There are at least two separate objections here. First, under factor four, if the reputation of the song suffers as a result of its use in advertising, its long-term “legitimate” market may also suffer, in that people will no longer think of it as the symbol of a political and cultural era but rather as a crass exemplar of commercial greed. In the case of parody, of course, the Supreme Court has told us that biting criticism that destroys the market for a work, as opposed to other uses that usurp the market, has no copyright relevance. The court is not sure that this analysis applies in full force when the use is noncritical, as is the case here. It seems to the court that, where plaintiff can prove with plausible evidence that harm of the type envisaged by Rob here may occur, it would be an important factor in denying fair use. In this case, however, the court has only Rob’s speculation before it, while evidence was presented that many people in the audience thought the ads were tasteful and raised the general level of TV advertising. The song was not used directly to plug Forvet cars but only to create a nostalgic atmosphere in which people could be told about the alleged qualities of Forvet’s cars. This evidence does not prove that no harm was done to the song’s long-term reputation, but in the absence of more affirmative evidence of harm, this court finds the argument somewhat unconvincing.
The second objection is in many ways more substantial. It is, in a sense, a “moral rights” objection that use of a serious work like Flowing Down the River in a commercial advertisement in and of itself diminishes the author’s honor and reputation in violation of the requirements of the Berne Convention. Ultimately, this reduces to the question of whether the purpose of copyright is to protect the “natural rights” of authors or to provide an economic incentive to authors so that they will produce works for the ultimate benefit of the public. In this country, the constitutional basis for intellectual property protection under the patent and copyright clause of the Constitution has uniformly been interpreted by the Supreme Court as demanding the latter interpretation. In the light of those binding interpretations, this district court is not free to impose a natural rights perspective on copyright. The fourth fair use factor, which focuses on the economic market for the work, also indicates by negative implication that moral or natural rights should not play a role in the fair use analysis.
Our copyright fair use decision is reinforced by the manner in which the United States joined the Berne Convention. The statute is clear that the Berne Convention is not self-executing in this country, so its moral rights provisions are not directly applicable to any dispute before U.S. courts interpreting U.S. copyright law. Moreover, the Congress has taken significant steps toward implementing the moral rights provisions of Berne by the adoption of the Visual Artists Rights Act of 1990. That carefully drafted statute does prohibit certain uses of works, even by the copyright owner, that injure the honor or reputation of the author, but--pointedly for this case--it applies only to works of visual art. A musical work such as the one at issue here is not covered by VARA, and this court believes that the extension of moral rights to musical works must come from Congress, not from the courts.
The court notes in passing that, although trademark and right-of-publicity rights have not been asserted, many of Rob’s complaints fit more comfortably under those headings. For example, the use of a sound-alike may have the effect of causing viewers to believe that Rob personally is endorsing Forvet vehicles--so-called “implied reverse passing off” under section 43(a) of the Lanham Act. Possibly some sort of disclaimer in association with the ads, or even a stronger remedy, would be available under that section. Also, the ads make use of Rob’s “signature” song, which might give rise to claims under state right-of-publicity law (and concomitant arguments over preemption by federal copyright). These claims are not before the court.
This case is not an easy one on the copyright issue of fair use. On the facts before us, a flat finding of fair use would mean that the author would not even obtain the economic benefits that licensing would provide. True, because Forvet’s request for a license and willingness to pay the “customary price” is crucial to the fair use finding, future authors in Rob’s position will know they must license when requested and will therefore reap at least the economic benefits. This does not help the author who, like Rob, believes that a particular use is not fair even where licensing if offered and wishes to refuse the license. If those authors exercise what they believe is their right to refuse to license, they are left wholly in the cold when a court concludes that the use is fair, essentially on market failure grounds. Fortunately, the Supreme Court in Campbell has hinted at a potential resolution of this dilemma. In footnote 10 the Court suggested that, in a proper case, the court could deny a finding of fair use but deny as well the remedy of injunction, forcing the copyright owner to accept an award of damages. I think that is the proper remedy here. I will therefore deny plaintiff’s requested injunction conditioned on Forvet’s paying plaintiff the market value of the use of the song that Forvet used in its ad. If the parties cannot agree on a value, this court retains jurisdiction to set the value based on the evidence and arguments of both sides.
Admittedly, by finding, on the facts proved, that Forvet’s use gives rise only to a damages remedy, the court essentially compels the copyright owner to license the use of his work, even in circumstances in which he would prefer to forgo the economic benefits of licensing rather than see his work used in a manner of which he disapproves. This, however, is one of the costs to the copyright owner of achieving the benefits of the statute. In the view of this court, following the dictates of Supreme Court decisions over many decades, the overriding goal of copyright is to serve the public interest. Rob has released his work to the public and has been well rewarded financially for his contribution. While the economic rewards belong to him, and remain with him under our decision today, the song itself belongs to some extent to the public both to enjoy in its own right as a musical work and as a building block for the creation of new works, as Forvet has done here.
The court recognizes that this decision does not fully comport with those of all other courts that have considered fair use issues. In particular, the district court in Castle Rock Entertainment concluded that noncritical derivative markets should belong to the copyright owner, viewing the purpose of the Copyright Act as one to advance the arts and leaving the artistic choice not to saturate markets in the copyright owner as the best means of achieving that purpose. Such a view is not clearly erroneous, but this court respectfully disagrees with the analysis. Copyright rights that deprive the public of works that the public wishes to have is, in the opinion of this court, contrary to the basic purposes of copyright to serve the public interest