No. 18-956
`
`In the
`Supreme Court of the United States
`
`GooGle llC,,
`
`v.
`
`oraCle ameriCa, iNC.,
`
`Petitioner,
`
`Respondent.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF OF AMICI CURIAE TEn CREaTORs’
`RIghTs ORganIzaTIOns In
`sUPPORT OF REsPOnDEnT
`
`mary e. raSenBerGer
`the authorS GuIlD, Inc.
`31 east 32nd Street
`New York, NY 10016
`(212) 563-5904
`
`nancy e. Wolff
`Counsel of Record
`Sara GateS
`coWan, DeBaetS, aBrahamS
`& ShepparD llp
`41 madison avenue, 38th Floor
`New York NY 10010
`(212) 974-7474
`nwolff@cdas.com
`Counsel for Amici Curiae
`
`294233
`
`
`
`In the
`Supreme Court of the United States
`
`GooGle llC,,
`
`v.
`
`oraCle ameriCa, iNC.,
`
`Petitioner,
`
`Respondent.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF OF AMICI CURIAE TEn CREaTORs’
`RIghTs ORganIzaTIOns In
`sUPPORT OF REsPOnDEnT
`
`mary e. raSenBerGer
`the authorS GuIlD, Inc.
`31 east 32nd Street
`New York, NY 10016
`(212) 563-5904
`
`nancy e. Wolff
`Counsel of Record
`Sara GateS
`coWan, DeBaetS, aBrahamS
`& ShepparD llp
`41 madison avenue, 38th Floor
`New York NY 10010
`(212) 974-7474
`nwolff@cdas.com
`Counsel for Amici Curiae
`
`294233
`
`
`
`TABLE OF CONTENTS
` PAGE
`
`TABLE OF AUTHORITIES ..................................... iii
`INTEREST OF AMICI CURIAE ................................ 1
`SUMMARY OF ARGUMENT ..................................... 4
`ARGUMENT ............................................................... 7
`I. THE SUPREME COURT SHOULD
`PROVIDE GUIDANCE ON THE
`APPLICATION OF THE STATUTORY
`FAIR USE FACTORS AND UPHOLD
`THE FEDERAL CIRCUIT’S DECISION .............. 7
`
`A. Courts Have Drastically Expanded the
`Fair Use Doctrine Since Campbell .................. 9
`
`
`B. The Transformative Use Test
`Should Not Engulf the Statutory Factors .... 17
`
`1. The Nature of the Copyrighted
`Work Is a Statutory Factor and
`Should Not Be Disregarded ...................... 18
`
`2. The Amount and Substantiality of
`the Use Should Not Be Swept Up
`in the Transformative Use Test or
`Reduced to a Mathematical Formula ....... 21
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`ii
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`C. Courts Should Consider Effects on
`Existing and Potential Markets from
`Widespread and Unrestricted Use,
`Including the Impact a Fair Use
`Finding Would Have on Creators’
`Ability to License Divisible Rights ................ 25
`
`D. Judges, Not Juries, Are Better Positioned
`to Make Fair Use Determinations ................. 32
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`E. The Federal Circuit Employed
`the Correct Standard of Review ..................... 35
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`
`CONCLUSION .......................................................... 37
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`iii
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`TABLE OF AUTHORITIES
`
`Cases Page(s)
`
`Andy Warhol Found. for the Visual
`Arts, Inc. v. Goldsmith,
`382 F. Supp. 3d 312 (S.D.N.Y. 2019) ...... 12, 13, 20
`Ascend Health Corp. v. Wells,
`No. 4:12-CV-00083-BR, 2013 WL
`1010589 (E.D.N.C. Mar. 14, 2013) ................ 10–11
`Authors Guild v. Google, Inc.,
`804 F.3d 202 (2d Cir. 2015) ........................... 21, 33
`Authors Guild, Inc. v. HathiTrust,
`755 F.3d 87 (2d Cir. 2014) ............................. 20, 21
`Bouchat v. Baltimore Ravens Ltd. P’ship,
`737 F.3d 932 (4th Cir. 2013) .................... 17–18, 20
`
`
`Brammer v. Violent Hues Productions, LLC,
`922 F.3d 255 (4th Cir. 2019) .......................... 24, 25
`
`
`Cambridge Univ. Press v. Becker,
`863 F. Supp. 2d 1190 (N.D. Ga. 2012) ................ 23
`Cambridge Univ. Press v. Patton,
`769 F.3d 1232 (11th Cir. 2014) ...................... 27, 31
`Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994) ...................................... passim
`Caner v. Autry,
`16 F. Supp. 3d 689 (W.D. Va. 2014) .................... 10
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`
`iv
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`Cariou v. Prince,
`714 F.3d 694 (2d Cir. 2013) ........................... 11, 18
`Castle Rock Entm’t v. Carol Publ’g Grp., Inc.,
`955 F. Supp. 260 (S.D.N.Y. 1997) ....................... 32
`
`
`Castle Rock Entm’t, Inc. v.
`Carol Publ’g Grp., Inc.,
`150 F.3d 132 (2d Cir. 1998) ................................. 11
`
`
`de Fontbrune v. Wofsy,
`409 F. Supp. 3d 823 (N.D. Cal. 2019) ............ 22–23
`Dhillon v. Does 1-10,
` No. C 13-01465 SI, 2014 WL 722592
` (N.D. Cal. Feb. 25, 2014) ................................... 22, 26
`
`Dr. Seuss Enters., L.P. v.
`Penguin Books USA, Inc.,
`109 F.3d 1394 (9th Cir. 1997) .............................. 19
`
`
`Estate of Smith v. Graham,
`No. 19-28, 2020 WL 522013
`(2d Cir. Feb. 3, 2020) ........................................... 20
`
`
`Faulkner Literary Rights, LLC v. Sony
`Pictures Classics Inc.,
`953 F. Supp. 2d 701 (N.D. Miss. 2013) ............... 20
`
`
`Fox News Network, LLC v. Tveyes, Inc.
`Pictures Classics Inc.,
`883 F.3d 169 (2d Cir. 2018) ................................. 31
`
`
`Golan v. Holder,
`565 U.S. 302 (2012) .............................................. 17
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` v
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`Harper & Row Publishers, Inc. v.
`Nation Enters.,
`471 U.S. 539 (1985) ...................................... passim
`Hosseinzadeh v. Klein,
`276 F. Supp. 3d 34 (S.D.N.Y. 2017) .................... 27
`Hughes v. Benjamin,
`No. 17-CV-6493 (RJS), 2020 WL 528704
`(S.D.N.Y. Feb. 3, 2020) .................................. 26, 27
`Kennedy v. Gish, Sherwood & Friends, Inc.,
`143 F. Supp. 3d 898
`(E.D. Mo. 2015) .................................. 14, 15, 22, 27
`Kienitz v. Sconnie Nation LLC,
`766 F.3d 756 (7th Cir. 2014) ................................ 12
`L.A. News Serv. v. Reuters Television Int’l, Ltd.,
`149 F.3d 987 (9th Cir. 1998) .......................... 32–33
`Leibovitz v. Paramount Pictures Corp.,
`No. 94 CIV. 9144 (LAP), 2000 WL
`1010830 (S.D.N.Y. July 21, 2000) ....................... 18
`Monge v. Maya Magazines, Inc.,
`688 F.3d 1164 (9th Cir. 2012) .............................. 19
`NXIVM Corp. v. Ross Inst.,
`364 F.3d 471 (2d Cir. 2004) ................................. 26
`Oracle Am., Inc. v. Google Inc.,
`No. C 10-03561 WHA, 2016 WL
`3181206 (N.D. Cal. June 8, 2016) ....................... 15
`Oracle Am., Inc. v. Google LLC,
`886 F.3d 1179 (Fed. Cir. 2018) .................... passim
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`vi
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`Perfect 10, Inc. v. Amazon.com, Inc.,
`508 F.3d 1146 (9th Cir. 2007) .............................. 33
`Seltzer v. Green Day, Inc.,
`725 F.3d 1170 (9th Cir. 2013) ...... 13, 14, 21–22, 32
`
`Soc’y of Holy Transfiguration Monastery, Inc.
`v. Gregory,
`689 F.3d 29 (1st Cir. 2012) .................................. 32
`
`Sony Corp. of Am. v. Universal City
`Studios, Inc.,
`464 U.S. 417 (1984) ...................................... 8, 9, 28
`
`Swatch Grp. Mgmt. Servs. Ltd. v.
`Bloomberg L.P.,
`756 F.3d 73 (2d Cir. 2014) ............................. 14, 19
`TCA Television Corp. v. McCollum,
`839 F.3d 168 (2d Cir. 2016) ........................... 16–17
`Twentieth Century Music Corp. v. Aiken,
`422 U.S. 151 (1975) ................................................ 9
`
`U.S. Bank Nat. Ass’n ex rel. CWCapital Asset
`Mgmt. LLC v. Vill. at Lakeridge, LLC,
`138 S. Ct. 960, 2018 WL 1143822 (2018) ............ 35
`U.S. Constitution & Statutes
`17 U.S.C. § 102 .......................................................... 29
`17 U.S.C. § 107 .............................................. 16, 25, 26
`U.S. CONST. art. I, § 8, cl. 8 ....................................... 28
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`vii
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`Other Authorities
`AM. INTELLECTUAL PROP. LAW ASS’N, REPORT
`OF THE ECONOMIC SURVEY 2019 ........................... 34
`Barton Beebe, An Empirical Study of U.S.
`Copyright Fair Use Opinions, 1978-2005,
`156 U. Pa. L. Rev. 549 (2008) .............................. 10
`Brief Amici Curiae of 83 Computer Scientists
`in Support of Petitioner,
`Google LLC v. Oracle Am. Inc.,
`No. 18-956 (U.S. Jan. 13, 2020) ........................... 36
`Brief for Petitioner,
`Google LLC v. Oracle Am. Inc.,
`No. 18-956 (U.S. Jan. 6, 2020) ............................. 36
`Brief of Amici Curiae Civ Pro, IP & Legal
`History Professors in Support of Petitioner,
`Google LLC v. Oracle Am. Inc.
`No. 18-956 (U.S. Jan. 7, 2020) ....................... 32, 34
`Brief of Microsoft Corporation as Amicus
`Curiae in Support of Petitioner,
`Google LLC v. Oracle Am. Inc.,
`No. 18-956 (U.S. Jan. 13, 2020) ........................... 36
`H.R. Rep. No. 94-1476, reprinted in
`1976 U.S.C.C.A.N. 5659 (1975) ................. 7, 30, 33
`Mary Rasenberger & June Besek, The
`Authors Guild v. Google: The Future of
`Fair Use?, MLRC Bulletin, no. 2, 2014 ................. 8
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`viii
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`Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright (2019) ........................... 6, 33
`Neil Weinstock Netanel, Making Sense of Fair
`Use, 15 Lewis & Clark L. Rev. 715 (2011) .......... 10
`Pierre N. Leval, Campbell As Fair Use
`Blueprint?, 90 Wash. L. Rev. 597 (2015) ............ 16
`Pierre N. Leval, Toward a Fair Use
`Standard, 103 Harv. L. Rev. 1105 (1990) ..... 10, 12
`S. Rep. No. 94-473, at 62 (1975) ..................... 7, 30, 33
`
`Six Takeaways from the Authors Guild 2018
`Author Income Survey (Jan. 5, 2019),
`https://www.authorsguild.org/industry-
`advocacy/six-takeaways-from-the-
`authors-guild-2018-authors-income-
`survey/#_ftnref1 ............................................. 27–28
`U.S. Bureau of Labor Statistics,
`Occupational Outlook Handbook:
`Photographers, BLS.gov, https://
`www.bls.gov/ooh/media-and-
`communication/photographers.htm #tab-1
`(last modified Sept. 4, 2019) ................................ 28
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`INTEREST OF AMICI CURIAE1
`Amici comprise a group of organizations that
`represent authors, artists, and other creators across
`the spectrum of copyright disciplines. The ten
`creators’ rights organizations have joined together
`for the first time as amici to address the important
`issues before the Court that have a significant
`bearing on their members’ daily lives. Members of
`the amici rely on copyright law to protect their work
`and to maintain a robust licensing system that
`provides them with the financial ability to be able to
`continue to create for the public good. As such,
`amici have a strong
`interest
`in the proper
`application of the fair use doctrine and know that
`any ruling will affect all creators across all
`disciplines.
` Consistent with their missions of
`advocating policies that promote and preserve the
`value of copyright, and protect the rights of creators,
`the ten creators’ rights organizations participate as
`amici in this case to help this Court understand how
`courts have applied the fair use analysis over the
`past twenty-five years since the Court’s decision in
`Campbell v. Acuff-Rose Music, Inc. Amici also take
`
`
`1 Pursuant to Sup. Ct. R. 37.6, amici curiae states that no
`counsel for any party authored this brief in whole or in part,
`and no party or counsel for any party made a monetary
`contribution intended to fund the preparation or submission of
`this brief.
` Only amici curiae made such monetary
`contributions. All parties have consented to the filing of this
`brief.
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`part to seek guidance from the Court on the
`application and balancing of the four fair use factors.
`Amici believe that Google’s use of Oracle’s Java SE
`software code was not fair and want to preserve the
`ability to license creative content across multiple
`platforms.2
`The ten creators’ rights organizations include:
`American Photographic Artists, Inc. (“APA”) is a
`leading non-profit organization run by, and for,
`professional photographers since 1981. Recognized
`for its broad industry reach, APA champions the
`rights
`of
`photographers
`and
`image-makers
`worldwide.
`American Society of Journalists and Authors
`(“ASJA”),
`founded
`in 1948,
`is
`the nation's
`professional
`association
`of
`independent
`and
`entrepreneurial nonfiction writers. ASJA represents
`the interests of freelancers and promotes their rights
`to control and profit from the uses of their work
`wherever it appears.
`American Society of Media Photographers, Inc.
`(“ASMP”) represents thousands of members who
`create and own substantial numbers of copyrighted
`photographs, used by entities of all sizes. In its
`
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`2 Amici do not address the first question before the Court
`regarding the copyrightability of Oracle’s software code in this
`brief, but instead refer the Court to Oracle’s brief on the merits.
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`seventy-five-year history, ASMP is committed to
`protecting
`the
`rights of photographers and
`promoting the craft of photography.
`The Authors Guild, Inc. (the “Guild”) is the
`nation’s oldest and largest professional organization
`for all writers with approximately 10,000 members,
`writers of all forms of nonfiction and fiction. The
`Guild promotes the rights and professional interests
`of authors in various areas, including freedom of
`expression and copyright.
`Digital Media Licensing Association (“DMLA”)
`represents the interests of digital licensing entities
`that offer,
`for
`license, millions of
`images,
`illustrations, film clips, and other content on behalf
`of
`thousands of
`individuals
`to editorial and
`commercial users. DMLA advocates to ensure
`copyright protection for content to ensure a fair
`licensing economy.
`Graphic Artists Guild, Inc. advocates for graphic
`designers, illustrators, animators, cartoonists, comic
`artists, web designers, and production artists on best
`industry practices
`through webinars, e-news,
`resource articles, and meetups, and
`for
`the
`protection of their works through copyright.
`National Press Photographers Association,
`the Voice of Visual Journalists, is a non-profit
`organization dedicated to the advancement of visual
`journalism and vigorously promotes the First
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`Amendment and intellectual property rights of
`journalists and freedom of the press in all its forms.
`North American Nature Photography Association
`is a preeminent nature photography association that
`advocates for the rights of nature photographers.
`Science Fiction and Fantasy Writers of America,
`Inc. is the national organization for professional
`authors of science fiction, fantasy, and related
`genres.
`Western Writers of America Inc. promotes the
`literature of the American West and recognizes the
`best in Western writing with the Spur Award and
`the Western Writers Hall of Fame.
`SUMMARY OF ARGUMENT
`As a matter of law and policy, the Court should
`affirm the Federal Circuit’s decision and find that
`Google’s use of Oracle’s software code to create its
`Android mobile platform does not constitute fair use.
`The crux of the issue in dispute is whether Google
`may fairly reuse protected elements of Oracle’s Java
`SE code without paying a licensing fee. The Federal
`Circuit answered this question in the negative, after
`undertaking a thorough analysis of the fair use
`doctrine and assessing and balancing the factors in
`light of the purposes of copyright law, as Congress
`intended. See Oracle Am., Inc. v. Google LLC, 886
`F.3d 1179, 1191 (Fed. Cir. 2018) (“Congress intended
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`§ 107 to restate the present judicial doctrine of fair
`use, not to change, narrow, or enlarge it in any way
`and intended that courts continue the common-law
`tradition of fair use adjudication.” (internal citations
`and quotations omitted)). But there is much more at
`stake than a review of the Federal Circuit’s decision.
`In addressing the Federal Circuit’s fair use
`analysis, this Court has the opportunity to clarify
`certain standards for the application of the fair use
`test set forth in Campbell v. Acuff-Rose Music, Inc.
`While
`fair use
`is
`intended to provide ample
`breathing room and prevent the rigid application of
`the copyright statute, see Campbell, 510 U.S. 569,
`577 (1994) (quoting Stewart v. Abend, 495 U.S. 207,
`236 (1990)), today, the doctrine is hindered by
`uncertainty. Courts and copyright owners alike
`struggle to properly assess and balance the statutory
`factors. Some courts have expanded the notion of
`“transformative use,” case-by-case, in a game of
`telephone tag to include uses that traditionally
`would have required a license, resulting in a loss of
`important
`licensing
`income
`for creators and
`divesting them of a full return on their creative
`labors. At the same time, other courts have hewed
`more closely to traditional principles of fair use
`described in Campbell, resulting in inconsistent
`applications of the doctrine.
`Specifically, courts have extended the meaning of
`“transformative use” far beyond the Court’s intended
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`construction of a “new expression, meaning, or
`purpose,” and found transformative use where there
`is merely a new audience, technology, or platform—
`areas that should be reserved for the copyright
`owner. As a leading copyright scholar observed,
`“transformative” is now a conclusory label that
`means “all things to all people.” See 4 Melville B.
`Nimmer & David Nimmer, Nimmer on Copyright §
`13.05[A][1][b] (2019). At the same time, once some
`courts find an allegedly transformative use, the
`statutory factors are ignored or viewed in a manner
`that makes them automatically favor fair use.
`Further, some courts applying the transformative
`use
`test have seemingly
`ignored Campbell’s
`instructions to consider the impact on the value of
`the works if the challenged use was to become
`widespread and unrestricted.
`Some amici for Google have proffered that the
`Court should limit its decision to the software
`context. The present amici disagree. They have
`seen first-hand how expansive fair use decisions—
`which approve a particular unlicensed use—are
`applied to uses well beyond the facts of the case.
`Amici support and regularly rely on robust fair use,
`but they have been devastated by overly expansive
`applications of fair use, particularly in areas where
`works would traditionally be subject to a license.
`Amici thus urge the Court to adopt an appropriate
`and balanced application of the doctrine—not to
`cabin its decision to software as fair use applies
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`equally to all works. Indeed, Campbell was a parody
`case about a rap song, but courts have applied the
`decision broadly to all types of uses. Amici believe
`that the Federal Circuit’s articulation of fair use,
`and its application of the de novo standard, correctly
`applied the doctrine to the facts of this case and
`support the Court’s adoption of its analysis.
`Additionally, as a matter of law and policy, amici
`believe that judges are in a better position that
`juries to make fair use determinations. A jury trial
`requirement would not only overturn decades of
`established copyright law, but would also discourage
`small businesses and independent creators, who
`cannot afford the high costs of trial, from enforcing
`their rights against clear infringers.
`
`ARGUMENT
`
`I. THE SUPREME COURT SHOULD PROVIDE
`GUIDANCE ON THE APPLICATION OF
`THE STATUTORY FAIR USE FACTORS
`AND UPHOLD THE FEDERAL CIRCUIT’S
`DECISION
`When Congress codified the judge-made doctrine
`in the Copyright Act of 1976, it intended for judges
`to continue the common-law tradition of adjudicating
`fair use on a case-by-case basis. See H.R. Rep. No.
`94-1476, at 66, reprinted in 1976 U.S.C.C.A.N. 5659,
`5679 (1975); S. Rep. No. 94-473, at 62 (1975). Since
`the Court’s 1994 decision in Campbell, when the
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`Court last directly addressed fair use and adopted
`the transformative use test, that test has dominated
`fair use analyses and, oftentimes, overshadowed the
`statutory factors.
`
`The Court in Campbell held that the court below
`had given inordinate weight to the commercial
`nature of a work and clarified that it is but one
`element in the first factor inquiry. Since the Court’s
`decision in Sony Corp. of America v. Universal City
`Studios, Inc., courts had relied too heavily on Sony’s
`statement that commercial use is presumptively
`unfair. 464 U.S. 417, 449 (1984). Campbell reset the
`balance by ruling that a commercial use should carry
`no presumption against a fair use finding.
`
`As “[t]he fair use pendulum has now swung too
`far away from its roots and purpose,” this case gives
`he Court the opportunity to step in and reset the
`doctrine so that is does not sweep in new forms of
`revenue, robbing creators of important new sources
`of revenue as traditional ones disappear. Mary
`Rasenberger & June Besek, The Authors Guild v.
`Google: The Future of Fair Use?, MLRC Bulletin, no.
`2, 2014, at 54, 58.
`
`incentives are to continue
`If the copyright
`working as our Founders intended, copyright owners
`should retain the ability to earn licensing income
`from new modes of distribution, new functionality,
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`and derivative works. The fundamental purpose of
`copyright, to promote science and the arts, is
`hindered when fair use is relied upon to immunize
`would-be infringers from paying for the use of
`creative expression. See Harper & Row Publishers,
`Inc. v. Nation Enters., 471 U.S. 539, 546 (1985) (“The
`rights conferred by copyright are designed to assure
`contributors to the store of knowledge a fair return
`for their labors.”); Twentieth Century Music Corp. v.
`Aiken, 422 U.S. 151, 156 (1975) (“The immediate
`effect of our copyright law is to secure a fair return
`for an ‘author’s’ creative labor. But the ultimate aim
`is, by this incentive, to stimulate artistic creativity
`for the general public good.”); Sony, 464 U.S. at 450
`(“The purpose of copyright is to create incentives for
`creative effort.”).
`
`The Court’s guidance on these issues would
`confirm that fair use serves the underlying purposes
`of copyright by ensuring creators receive a fair
`return on their creation to foster creativity, rather
`than stifle it.
`
`A. Courts Have Drastically Expanded the
`Fair Use Doctrine Since Campbell.
`In Campbell, the Court emphasized that the
`statutory factors should not be treated in isolation
`but should instead be explored and weighed together
`in light of the purposes of copyright. 510 U.S. at
`578. The Court also provided new guidance on the
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`10
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`first statutory factor, adopting Judge Pierre Leval’s
`analysis, which asked whether and to what extent
`the new work is transformative. Id. at 579; Pierre
`N. Leval, Toward a Fair Use Standard, 103 Harv. L.
`Rev. 1105, 1111 (1990). As Judge Leval conceived,
`determining whether, and to what extent, a use is
`“transformative” is a way of answering the question
`of how powerful or persuasive the justification for
`the use is, “because the court must weigh the
`strength of the secondary user’s justification against
`factors favoring the copyright owner.” Leval, supra.
`Though the Court noted that transformative use
`is not necessary for a finding of fair use, courts have
`widely adopted the judicially created sub-factor. See
`Neil Weinstock Netanel, Making Sense of Fair Use,
`15 Lewis & Clark L. Rev. 715, 736 (2011) (providing
`empirical data about fair use decisions to show that
`the “fair use doctrine today is overwhelmingly
`dominated by the Leval-Campbell transformative
`use doctrine”); Barton Beebe, An Empirical Study of
`U.S. Copyright Fair Use Opinions, 1978-2005, 156 U.
`Pa. L. Rev. 549, 605 (2008) (undertaking an
`empirical study and finding that, in the opinions in
`which transformativeness played a role, “it exerted
`nearly dispositive force not simply on the outcome of
`factor one but on the overall outcome of the fair use
`test”). Some courts have gone a step further and
`deemed the transformative use test a required
`factor, see, e.g., Caner v. Autry, 16 F. Supp. 3d 689,
`709 (W.D. Va. 2014); Ascend Health Corp. v. Wells,
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`11
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`No. 4:12-CV-00083-BR, 2013 WL 1010589, at *13
`(E.D.N.C. Mar. 14, 2013).
`While courts initially tracked the language of
`Campbell closely, see, e.g., Castle Rock Entm’t, Inc. v.
`Carol Publ’g Grp., Inc., 150 F.3d 132, 141–46 (2d
`Cir. 1998), later decisions drastically expanded the
`meaning of “transformative,” resulting in broad fair
`use findings even where alterations to the original
`work were nominal or non-existent. For example,
`the Second Circuit, in the 2013 case Cariou v. Prince,
`determined
`that appropriation artist Richard
`Prince’s mildly derivative versions of twenty-five of
`Patrick Cariou’s
`images of Rastafarians were
`transformative because Prince had given
`the
`photographs new expression by employing new
`aesthetics. 714 F.3d 694, 706–08 (2d Cir. 2013).
`The Second Circuit cited Campbell for this
`standard (id. at 707), plucking out the language
`“reasonably be perceived” from an observation about
`parody in which the Court stated, “[t]he threshold
`question when fair use is raised in defense of parody
`is whether a parodic character may reasonably be
`perceived.” Campbell, 510 U.S. at 582. Instead of
`confining the “reasonably be perceived” standard to
`parody, per Campbell, the Second Circuit applied it
`broadly to any type of transformative use. See
`Cariou, 714 F.3d at 707 (“[W]e do not analyze satire
`or parody differently from any other transformative
`use.”). In doing so, the Second Circuit extended the
`
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`12
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`analysis of what is transformative beyond the
`question of whether
`there
`is a persuasive
`justification for the use, as originally intended. See
`Leval, supra.
`Though not all courts have agreed with Cariou’s
`reasoning, see, e.g., Kienitz v. Sconnie Nation LLC,
`766 F.3d 756, 758 (7th Cir. 2014) (“We’re skeptical of
`Cariou’s approach, because asking exclusively
`whether something is “transformative” not only
`replaces the list in § 107 but also could override 17
`U.S.C. § 106(2), which protects derivative works.”),
`some courts have closely followed this expansive
`application of the transformative use test. For
`instance, recently, in the 2019 case Andy Warhol
`Foundation for the Visual Arts, Inc. v. Goldsmith,
`the Southern District evaluated whether Andy
`Warhol’s color-illustrated versions of a black-and-
`white photograph of the musician Prince constituted
`fair use. 382 F. Supp. 3d 312, 318–20, 325–26
`(S.D.N.Y. 2019). Notably, Vanity Fair had paid a
`single license fee for Lynn Goldsmith’s photograph,
`which Warhol later used in a commissioned work for
`the magazine, without Goldsmith’s authorization.
`Id. at 318. But Warhol did not stop there, and
`continued to improperly make use of the photograph,
`creating a series of sixteen color-illustrated versions.
`Id. at 319–20.
`In evaluating fair use, the Southern District,
`relying on the Cariou court’s analysis, determined
`
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`13
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`
`
`that the use was a transformative fair use, because
`Warhol’s works “can reasonably be perceived to have
`transformed
`Prince
`from
`a
`vulnerable,
`uncomfortable person to an iconic, larger-than-life
`figure.” Id. at 326. Even though Warhol had merely
`added color to the photographs, the Court stretched
`the meaning of transformative to find fair use in a
`simple derivative work, negating the photographer’s
`exclusive right to authorize derivative uses.
`In another example of a strained interpretation of
`“transformative” involving minimal alterations to
`the underlying work, the Ninth Circuit, in Seltzer v.
`Green Day, Inc., considered whether the rock band’s
`use of an illustrator’s drawing of a screaming,
`contorted face in the backdrop of a music video was
`transformative where the image was displayed in
`full with a red cross spray-painted over it. 725 F.3d
`1170, 1173–74 (9th Cir. 2013). Even though the
`court recognized that the transformative use test is a
`“highly contentious topic,” it nonetheless found that
`the spray-painted cross was sufficient to transform
`the underlying work. Id. at 1176–77. In reaching its
`decision, the Ninth Circuit compared the meaning of
`the song in the music video (about the hypocrisy of
`religion) with the message or meaning of the
`underlying
`image
`(which the court could not
`determine with certainty), finding that because the
`original work said nothing about religion, the use of
`the
`image
`in
`the backdrop
`conveyed
`“new
`information, new aesthetics, new
`insights and
`
`
`
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`14
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`
`
`understandings” that were plainly distinct from
`those of the original piece. Id. at 1177.
`Other courts have similarly expanded the
`understanding of what is transformative, finding a
`different purpose where the context has changed.
`For instance, in Swatch Group Management Services
`Ltd. v. Bloomberg L.P., the Second Circuit held that
`Bloomberg’s release of an earnings call, which
`Swatch made to its investors, to Bloomberg’s paid
`subscribers was transformative. 756 F.3d 73, 84–85
`(2d Cir. 2014). The Second Circuit noted that courts
`often find transformative uses “by emphasizing the
`altered purpose or context of the work, as evidenced
`by surrounding commentary or criticism,” but
`despite its finding that Bloomberg provided no
`additional commentary or analysis, determined that
`Bloomberg’s release of the earnings call in full was
`transformative because its purpose was to publish
`factual information, while Swatch’s purpose was to
`withhold it. Id.
`The Swatch decision is similar to Kennedy v.
`Gish, Sherwood & Friends, Inc., in which a Missouri
`district court determined that the defendant’s use of
`a photographer’s images in advertising mockups and
`presentations was
`transformative because
`the
`defendant used the images in a new context to serve
`a different purpose, and was not simply superseding
`the photographer’s purpose. 143 F. Supp. 3d 898,
`910–11 (E.D. Mo. 2015). There, the judge relied
`
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`15
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`heavily on Cariou and other cases that improperly
`expanded the meaning of transformative, concluding
`that the defendant’s use was “transformed” merely
`because it was placed in a new context. Id.
`Following the lead of the prior courts, the district
`court simply drew the broad conclusion that the
`work was “transformative,” doing little to explain its
`reasoning beyond a conclusory finding that the
`purposes were different. What the court failed to
`understand is that a work can be licensed for many
`purposes under copyright.
`The decision by the district court in the case at
`bar offers another example of the expansive
`application of fair use. The district court found that
`Google’s selection and verbatim copying of some of
`Oracle’s Java API packages, combined with new
`implementing code and new methods, classes, and
`packages written by Google, constituted a fresh
`context giving new expression, meaning, or message
`to the duplicated code.” Oracle Am., Inc. v. Google
`Inc., No. C 10-03561 WHA, 2016 WL 3181206, at *9
`(N.D. Cal. June 8, 2016). The lower court based its
`transformative finding on the context of the use,
`noting that Oracle’s copyrighted work was designed
`and used for desktop and laptop computers, rather
`than smartphones. See id. By focusing on context
`and applying such a sweeping view of
`the
`transformative test, the district court disregarded
`the Campbell Court’s express formulation—that the
`new work must “add[] something new, with a further
`
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`16
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`purpose or different character, altering the first with
`new expression, meaning, or message.” Campbell,
`510 U.S. at 579. The Federal Circuit later reversed
`the lower court’s decision, correctly concluding that
`Google’s use is not transformative because Google
`did not have a new, distinct purpose in using
`Oracle’s API packages, nor did
`it make any
`alteration to the expressive content or message of
`the underlying copyrighted material. Oracle, 886
`F.3d at 1199–1201.
`As evidenced by numerous lower court decisions,
`judges
`have
`distorted
`the meaning
`of
`transformativeness by expanding the test well
`beyond what the Court could have originally
`intended. See Pierre N. Leval, Campbell As Fair Use
`Blueprint?, 90 Wash. L. Rev. 597, 608 (2015)
`[hereinafter Leval, Blueprint]
`(discussing
`the
`ambiguity of “transformative” and stating that the
`term was “never intended as a full definition or
`explanation of fair use”). Notably, the Campbell
`Court introduced transformativeness specifically to
`explain why a parody was fair use. 510 U.S. at 579.
`The judicially created sub-factor, which is not
`included in the statutory text of Section 107, has
`now come to dominate fair use analyses, even though
`the Court made clear that transformativeness is but
`one aspect that courts may consider and is not a
`requirement for a fair use finding. See id.; TCA
`Television Corp. v. McCollum, 839 F.3d 168, 179 n.9
`
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`17
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`is not
`
`limited to
`
`(“Fair use
`(2d Cir. 2016)
`transformative works”).
`Rather than continue to permit “transformative”
`to be applied so broadly that it means all new uses,
`the Court should rein in the test and provide
`additional
`guidance
`on
`the meaning
`of
`“transformative,” and rebalance fair use again, so
`that it provides sufficient breathing room for free
`expression
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