The study--Recut, Reframe, Recycle: Quoting Copyrighted Material in User-Generated Video--identifies nine kinds of uses of copyrighted material that are eligible for fair use consideration. They range from the incidental (such as a video maker’s family singing “Happy Birthday”) to parody (a Christian takeoff on the song “Baby Got Back”) to pastiche and collage (finger-dancing to “Harder, Better, Faster, Stronger”).

Better yet, the study contains links to dozens and dozens of videos--many of which are brilliant and hilarious--that demonstrate these various kinds of uses. WARNING: For those of you who've lost an hour or so of office time to the lure of the Sirens of the Island of the YouTube Concert Videos, prepare to land on Calypso's Island of Transformative Use, where you will be tempted by the vicious satire of George Bush Don't Like Black People and the astounding tour de force of History of Dance and the marvelously clever Ten Things I Hate About Commandments. And many, many more.

Kudos to the study's authors, Pat Aufderheide and Peter Jaszi, for shedding some coherent light on this vital new realm of fair use.  Pat Aufderheide is a professor in American University’s School of Communication and the director of the school's Center for Social Media.  Peter Jaszi is a professor in American University’s Washington College of Law and co-director of the law school’s Program on Information Justice and Intellectual Property.

Patry discusses an empirical study by Professors Matthew Sag, Tonja Jacobi and Maxim Stych, posted here on the Social Science Research Network, in which the authors present the results of their examination of the past 22 years of Supreme Court decisions in the fields of patents, copyrights and trademarks.  According to the abstract of their article, their analysis shows "that ideology is a significant determinant of cases involving intellectual property rights."  Even more interesting, ideology seemed to dictate different results depending upon the type of intellectual property involved, e.g., the Justices were more likely to vote against a trademark owner but for a copyright owner.

On a less scholarly basis I have noticed similar -- and similarly unexpected -- ideological divides in lower courts in the field of right of publicity.  Given that the right of publicity is a property right, judges from which end of the political spectrum are more likely to protect it?  Wrong.

Judge Alfred Goodwin wrote the majority opinion -- the same Judge Goodwin who wrote the opinion in Newdow v. U.S. Congress, 292 F.3d 597 (9th Cir. 2002), holding that inclusion of the words "under God" in the Pledge of Allegience violated the Establishment Clause of the First Amendment:

The Pledge, as currently codified, is an impermissible government endorsement of religion because it sends a message to unbelievers “that they are outsiders, not full members of the political community, and an accompanying message to adherents that they are insiders, favored members of the political community.”

But when confronted with the First Amendment claims of Samsung, Judge Goodwin had no trouble rejecting the parody defense and ruling in Vanna White's favor:

The ad's spoof of Vanna White and Wheel of Fortune is subservient and only tangentially related to the ad's primary message: “buy Samsung VCRs.” Defendants' parody arguments are better addressed to non-commercial parodies.The difference between a “parody” and a “knock-off” is the difference between fun and profit.

Contrast that ruling with this excerpt from the conservative Judge Alex Kozinski's stirring dissent from the denial of rehearing en banc in that case:

 The panel's opinion is a classic case of overprotection. Concerned about what it sees as a wrong done to Vanna White, the panel majority erects a property right of remarkable and dangerous breadth: Under the majority's opinion, it's now a tort for advertisers to remind the public of a celebrity. Not to use a celebrity's name, voice, signature or likeness; not to imply the celebrity endorses a product; but simply to evoke the celebrity's image in the public's mind. This Orwellian notion withdraws far more from the public domain than prudence and common sense allow. It conflicts with the Copyright Act and the Copyright Clause. It raises serious First Amendment problems. It's bad law, and it deserves a long, hard second look.

The  Vanna White case is only one of many such cases where the clash of First Amendment values and celebrity property rights produces intriguing ideological alignments.  Indeed, check out Judge Kozinski's equally stirring dissent from the denial of rehearing en banc in Wendt v. Host International, where he is joined by Bush Sr.-nominated Judge Kleinfeld and Carter-nominated Judge Tashima.

Although the Eighth Circuit concluded that use by CBC of the names and statistics of the players in its commercial fantasy baseball operations satisfied all three elements of the Missouri tort -- namely, (1) use of the player's name as a symbol of his identify, (2) without his consent, and (3) with the intent to obtain a commercial advantage -- it held that this use was nevertheless a "fair use" under the First Amendment.

But of more interest to me -- and to those concerned that right-of-publicity has become the tort of choice for celebrities seeking to avoid the First Amendment barriers to libel and privacy claims -- is the Eighth Circuit's treatment of the controversial  First Amendment test created by the Missouri Supreme Court in the Tony Twist case, which is also the same case that articulated the three elements of the tort claim set forth in the preceding paragraph.

It is a legal test that Geoff, Pete and I are all too familiar with, having fought it in the Missouri courts on behalf of Todd McFarlane and having unsuccessfully petitioned the U.S. Supreme Court for a writ of certiorari.  That cert petition generated my favorite amicus brief of all time, filed by UCLA Law Professor Eugene Volokh, creator of the great Volokh Conspiracy blog, on behalf of Michael Crichton, Larry David, Elmore Leonard, Scott Turow and other impressive names.  Read his masterful explanation of how the "predominant purpose" test runs counter to the realities of artistic creation.

So what did the Eighth Circuit do with the "predominant purpose" test? Totally ignored it.  Although the Eighth Circuit cites various state and federal precedents in its discussion of why the First Amendment protects the fantasy baseball use of the names and identities of the real players, it makes no mention of the First Amendment test created by the same Missouri decision that it relies upon for the elements of the tort.  Interesting.

For other thoughts on the case, check out this interesting post by Cathy Kirkham at her Silicon Valley Media Law Blog.

The basic facts are straightforward: The main defendant, Corbis Corp., licenses the use of stock photographs and images. Its customers range from newspapers and magazines to advertising agencies.  It had, for example, given Rolling Stone Magazine a license to use certain photographs of James Brown in a profile the magazine published under the title Being James Brown.

So far, so good.  Entirely proper, no cause of action.

Corbis filed a motion to dismiss, arguing (a) that its display of the photographs could not constitute "an improper commercial purpose" under the state law because it already owned or controlled the copyrights in them, and (b) that Brown's claims were preempted by the federal Copyright Act.  The trial court granted the motion to dismiss on both grounds; but then, on a motion for reconsideration from beyond the grave, reversed itself and denied the motion on both grounds.

The court of appeals eventually declined to resolve the first issue -- "commercial purpose" -- on the ground that at the pre-trial motion stage there were just too many disputed material facts to conclude that the trial court erred in denying the motion.  Its discussion of those facts, however, is worthy of a law school exam question.  I respectfully dissent.

But as for the preemption question, the opinion shows how complicated that issue remains after the Seventh Circuit's decision in Toney v. L'Oreal USA, Inc. 406 F.3d 905 (7th Cir.2005), which -- like the trial court in the James Brown case -- was the second decision on that appeal and which, upon a motion for rehearing, reached the opposite result from the original decision.  (Both opinions are available here.)  The plaintiff in Toney was a fashion model who consented to the use of her photograph for a limited time on a hair care package.  When a successor company used her photograph after expiration of the consent, she sued for violation of her right of publicity. The defendant, as the owner of the copyright in the photo, moved to dismiss under Section 301 of the Copyright Act,  arguing that its reproduction and display of the photography were within its exercise of its exclusive rights under Section 106.  But the Seventh Circuit ultimately held that her claim survived preemption by the Copyright Act because the subject matter of a right-of-publicity claim is not a particular photograph but "the persona of the plaintiff as a human being."  Toney, 406 F.3d at 908.  Because the copyright law did not protect the plaintiff's "identity," her state claim was not preempted.

A later decision by the Ninth Circuit in Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006), reached the opposite conclusion in a case where Sony had a license to use a recording of plaintiff's song. Without her permission, Sony included a sample of the song in a CD and music video featuring another artist.  The Ninth Circuit dismissed her right-of-publicity claim as preempted by the copyright law because it was based solely on her voice "embodied within a copyrighted sound recording."

Corbis argued that Laws and not Toney applied because its web site was merely displaying the photograph as the photograph itself.  The Illinois court disagreed:

In Toney, the defendant used a copyrighted photo to endorse a product. By contrast, Corbis is using a copyrighted photo to distribute a license. Corbis argues that Brown has not asserted a right of publicity claim separate from the enumerated rights under section 106 of the Copyright Act and that his claim is a direct challenge to Corbis's right to control the distribution and display of the copyrighted images.

Brown responds that Corbis argues a distinction without a difference. Brown argues that the images of James Brown advertised for sale on Corbis's Web site do, in fact, constitute fixed work on the Internet in that the "licenses" result in a tangible photograph to the end user. Brown distinguishes Laws, noting that there, the plaintiff had contractually released control and copyright of her recording to Sony. ... By contrast, Brown never consented to any sale of his photographs and never possessed control of a copyright interest to release.

Under the circumstances, where it is possible that the photos as displayed on Corbis's Internet Web page can be interpreted as tangible, the Publicity Act as applied here would not preempt copyrights.

And thus the Illinois court rejected the preemption argument.

But if you'd prefer to earn a Juris Doctor Dre or would rather be sippin' on Gin & Jurisprudence, try the Law of Hip Hop, which traces its origins to the Mack Daddy of "fair use" cases, Campbell v. Acuff-Rose. How can you not love a U.S. Supreme Court decision that quotes these timeless lyrics from Luther "Luke" Campbell's version of the Roy Orbison classic, "Pretty Woman":

Big hairy woman, you need to shave that stuff
Big hairy woman, you know I bet it's tough
Big hairy woman, all that hair it ain't legit
Cause you look like "Cousin It"
Big hairy woman

Go Shorty,
It’s your birthday,
We gon’ party like it’s yo birthday,
We gon’ sip Bacardi like it’s your birthday,
And you know we don’t give a f---
It’s not your birthday.

The issue was whether the refrain "Go, Shorty, it's your birthday" infringes the refrain "Go, ____, it's your birthday" in Campbell's song.  In the summary judgment decision (which the 11th Circuit incorporated verbatim as an attachment to its one-paragraph per curiam opinion), the district court takes us on an historical tour of uses of the refrain "Go, _____, it's your birthday" that predate Campbell's song. The death blow, though, is delivered by Luke himself, who "admits that he did not create the phrase but borrowed it from popular chants at the time."  The court concludes that the phrase "was a common hip-hop chant at the time" of Campbell's song and thus "a common, unoriginal, and noncopyrightable element of the song [that] is not entitled to copyright protection."

So we slide along our seamless web from an infringement suit against Luther Campbell's song that failed because of his "transformative use" of copyrightable material to an infringement suit based upon Luther Campbell's song that failed because of his nontransformative use of noncopyrightable material.

Go, Holmes, it's your birthday.

But for those of us who toil in the journalism vineyards -- where the purest and oldest of those DNA strands are found -- the fair use defense actually travels, at least in invasion of privacy lawsuits, under the alias of "newsworthiness."  The scope of that doctrine took center stage in Alvarado v. KOB-TV, a recent 10th Circuit decision affirming a district court's dismissal of a lawsuit filed by two undercover cops against an Albuquerque TV station that broadcast their identities. The  plaintiffs were Albuquerque cops who were named on the news show as suspects in a sexual assault case; in addition, the station aired video footage of each man opening the door to his home after the reporter rang the doorbell.  The cops were eventually cleared of the sexual assault charge, although they continued to receive threats as a result of the broadcast. There was no defamation claim because the station's broadcast was entirely true: they had indeed been charged with a crime.  So instead, they (and their wives) sued the station for invasion of privacy and intentional infliction of emotional distress.

(In New Mexico, as in many states, "newsworthiness" is not a defense; instead, the plaintiff has the burden of proving the opposite, i.e., "lack of legitimate public interest in the information.").

Because the courts generally agree that allegations of police misconduct are worthy of public interest, and thus cannot form the basis for an invasion of privacy claim, the plaintiffs in Alvarado argued that there should be an exception for undercover officers.  The court declined to create such an exception, explaining:

To the extent First Amendment law informs our determination of whether Alvarado and Flores can allege facts showing that publicity of their identities and undercover status in the context of the alleged sexual assault was not a matter of public interest, we are among a number of courts that have found that police misconduct allegations specifically and officer qualifications generally are a matter of public interest in First Amendment analysis.

*  *  * [W]e can find no precedent for such an exception, and we are not inclined to create one on policy grounds, despite our concerns about the safety of undercover officers and the need to avoid disincentives for entering the profession.

The lawyers for the cops argued by analogy to the same federal criminal statute at issue in the Valeria Plame scandal, namely, 50 U.S.C. sec. 421, which criminalizes the disclosure of the identity of covert intelligence agents.  The Tenth Circuit had no trouble distinguishing that federal criminal law from New Mexico's tort law.  (See discussion at pages 19-20 of the slip opinion.)

Thus "fair use" -- like the rose in Juliet's famous analogy -- functions just as well under the name "newsworthiness."

Knowing Hollywood, we can assume that all of the necessary permissions were signed in triplicate long before the first scene was shot.  But what if Beckham had refused to give permission?  Could you still include the name of the most famous athlete on the planet in the title of your motion picture?  Could you use for free a name that had a commercial endorsement value worth tens of millions of dollars?

However, use "for purposes of trade" does not ordinarily include the use of a person's identity in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses.

Comment c to Section 47 elaborates on the scope and limits of such usage:

The right of publicity . . . is fundamentally constrained by the public and constitutional interest in freedom of expression. The use of a person’s identity primarily for the purpose of communicating information or expressing ideas is not generally actionable as a violation of the person’s right of publicity. The scope of activities embraced within this limitation on the right of publicity has been broadly construed . . . . Use of another’s identity in a novel, play, or motion picture is also not ordinarily an infringement. The fact that the publisher or other user seeks or is successful in obtaining a commercial advantage from an otherwise permitted use of another’s identity does not render the appropriation actionable. However, if the name or likeness is used solely to attract attention to a work that is not related to the identified person, the user may be subject to liability for a use of the other’s identity in advertising.

Working from that Comment, the courts have fashioned the so-called "relatedness" test, which first appeared in the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)  In Rogers, the court had to determine whether the First Amendment  barred a right-of-publicity claim by actress-dancer Ginger Rogers against the creators of the film “Ginger and Fred.” Despite the title, the film was not about Ginger Rogers and Fred Astaire; instead, it was a Frederico Fellini film about two Italian cabaret performers who imitated the famous dancing duo and become known in Italy as “Ginger and Fred.” In applying the “relatedness” test, the court held that the title of the movie was protected by the First Amendment because it was not “wholly unrelated” to the movie and was not “simply a disguised commercial advertisement for the sale of goods and services.” Id. at 1005.

Since then, the Sixth Circuit has applied the "relatedness" test in Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2001), a right-of-publicity claim by civil rights icon Rosa Parks against the music group Outkast . The issue there was whether the lyrics to a rap song entitled “Rosa Parks” were “related” to the title of the song. The Ninth Circuit imported the test into the trademark realm in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), to determine whether the First Amendment protected the use of "Barbie Girl" for the title of a song by Aqua that poked fun at one of Mattel's most valuable properties.  (Check out the music and lyrics here.)  Judge Alex Kozinski, who wrote the opinion, started with a witty acknowledgment of the stakes at issue: "If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong."  Trademark Kong lost there, and Beckham should lose here.  In a ruling that would apply equally to Beckham, Judge Kozinski wrote:

Rogers concluded that literary titles do not violate the Lanham Act "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Id. at 999 (footnote omitted). We agree with the Second Circuit's analysis and adopt the Rogers standard as our own.

Applying Rogers to our case, we conclude that MCA's use of Barbie is not an infringement of Mattel's trademark. Under the first prong of Rogers, the use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself. As noted, the song is about Barbie and the values Aqua claims she represents. The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity.  

The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch "hoe." A "hoe," of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden's response. We have taken the liberty of changing "hoe" to "ho," a staple of rap music vernacular as, for example, when Ludacris raps "You doin' ho activities with ho tendencies."

If that footnote doesn't make you swoon, check out his latest opinion, Central Manufacturing, Inc. v. George Brett, et al. -- a trademark infringement case in which the lead defendant is indeed THAT George Brett, now enshrined in the Baseball Hall of Fame.  The Gods of Serendipity sent the appeal to a panel that included Judge Evans, and the resulting opinion will surely please them.

But the real fun begins with his handling of the plaintiff, whose owner, Leo Stoller, in the Court's words, "is no stranger to trademark litigation. Indeed, one might say it is the essential part of his business strategy. In fact, were there a Hall of Fame for hyperactive trademark litigators, Stoller would be in it. And, like George Brett, he would have gotten in on the first ballot. Acting as a sort of intellectual property entrepreneur, Stoller has federally registered scores of trademarks with the U.S. PTO (Central lists upwards of 50 that are actual or pending for just the 'Stealth' mark), many containing everyday words that regularly pop up in commercial enterprise."  And this was hardly Mr. Stoller's first unsuccessful attempt to enforce one of those trademarks.

(One STEALTH registration Stoller missed was for condoms -- Reg. No. 2249512 --registered by a Texas company called John Hughes Ceramic Tile Contractor. The Stealth Condom was all black and allegedly marketed under the slogan: "They'll never see you coming.")

Turns out George Brett's company use of STEALTH for bats predated Stoller's registration.  Indeed, the plaintiff's claim was deemed so meritless by the trial court that it not only canceled its trademark registration but awarded fees and costs to the defendants.  On appeal, the Seventh Circuit upheld that award under the "clear error" standard which, as Judge Evans explained (quoting yet another colorful Seventh Circuit jurist, William Bauer), permits reversal only if the challenged ruling "strikes us as wrong with the force of a 5-week-old, unrefrigerated dead fish."

Sigh.

Take that thought over to the realm of Karaoke, which is the subject of a fascinating recent decision by the Sixth Circuit in Zomba Enterprises, Inc. v. Panorama Records, Inc.  As Circuit Judge Karen Nelson Moore astutely observes in her opening paragraph:

Countless people have lined up at various venues to perform their favorite songs with, and in front of, their friends. But few participants (with the possible exception of IP lawyers) ever stop to consider the intellectual property regime governing karaoke.

While the decision offers important insights on various copyright topics, including calculation of statutory damages, the "fair use" discussion will, if nothing else, make you admire the moxie of the defendant's attorneys -- or at least make you sympathize with their plight.

While no lawyer, copyright or otherwise, enjoys having a court of appeals label his position "wholly meritless," at least these lawyers fared better than defense counsel in the earlier "fair use" case of Dr. Seuss Enterprises, L.P., V. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997), where the publishers of this spoof of the O.J. Simpson case got sued by Dr. Seuss Enterprises, owners of the copyright in the original.  The Ninth Circuit described the publisher's attorneys struggle to satisfy the  "parody" version of "fair use" as follows (109 F.3d at 1402-03):

In their Opening Brief, Penguin and Dove characterize The Cat NOT in the Hat! ("Parody") as follows: "The Parody is a commentary about the events surrounding the Brown/Goldman murders and the O.J. Simpson trial, in the form of a Dr. Seuss parody that transposes the childish style and moral content of the classic works of Dr. Seuss to the world of adult concerns. The Parody's author felt that, by evoking the world of The Cat in the Hat, he could: (1) comment on the mix of frivolousness and moral gravity that characterized the culture's reaction to the events surrounding the Brown/Goldman murders, (2) parody the mix of whimsy and moral dilemma created by Seuss works such as The Cat in the Hat in a way that implied that the work was too limited to conceive the possibility of a real trickster "cat" who creates mayhem along with his friends Thing 1 and Thing 2, and then magically cleans it up at the end, leaving a moral dilemma in his wake"

The Ninth Circuit's response?

We completely agree with the district court that Penguin and Dove's fair use defense is "pure shtick" and that their post-hoc characterization of the work is "completely unconvincing."

Ouch.

Burnett had sued over a short clip from Fox's animated television show, Family Guy. In the scene, Griffin family patriarch Peter Griffin and his pals visit a porn shop. Upon entering the store, Peter remarks that it is cleaner than he expected. One of his friends explains that "Carol Burnett works part time as a janitor."  The scene shifts to an animated figure resembling the Charwoman character from the Carol Burnett Show mopping the floor next to bin of life-size blow-up dolls and  a rack of XXX movies.  Judge Pregerson explains:

"As the 'Charwoman' mops, a slightly altered version of Carol's Theme from The Carol Burnett Show is playing.  The scene switches back to Peter and his friends.  One of the friends remarks, 'You know, when she tugged her ear at the end of that show, she was really saying goodnight to her mom.'  Another friend responds, 'I wonder what she tugged to say goodnight to her dad,' finishing with a comic's explanation, 'Oh!'"

Criticism of figures as universally recognized as Carol Burnett "will not always be reasoned or moderate," and may come in the form of " 'vehement, caustic, and sometimes unpleasantly sharp attacks." Hustler Magazine v. Falwell, 485 U.S. 46 (1988). Here, Family Guy put a cartoon version of Carol Burnett/the Charwoman in an awkward, ridiculous, crude, and absurd situation in order to lampoon and parody her as a public figure.

But the irony here is not, as Judge Pregerson sadly observed in his concluding paragraph, that the "new media" engages in "the crude jokes and insensitive, often mean-spirited programming" that would have been shunned during Ms. Burnett's years in the "old media."  Nor is it that "it takes far more creative talent to create a character such as 'Charwoman' than to use such characters in a crude parody."

No, the irony here is that the defendant proudly marching under the First Amendment banner in this case is an affiliate of Fox News, the plaintiff that sued political satirist Al Franken and his publisher for trademark infringement over the title and cover of his book, Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right.  When U.S. District Judge Denny Chin denied Fox's request for an injunction in that case, he not only described Fox's claims as "wholly without merit" but said that Fox New was "trying to undermine the First Amendment."

These litigation flip-flops give a Fox "spin-free" twist on that old saying: "We have met the enemy, and he is us."

[T]he entire video announcing her choice for a campaign song tracks so closely to the bizarre ending of “The Sopranos” less than two weeks ago - from the soundtrack (”some will win … some will lose”), to the diner, to Bill Clinton’s comment that Chelsea was outside “parallel parking” just like Meadow.

(The Clintons even have a little fun over the onion rings - Mr. Clinton picks up a carrot slice, longs for onion rings but the senator tells him she’s only looking out for him. How’s the campaign going? he asks. She replies, just like A.J., “Focus on the good times.”)

Stay tuned.  Fellow blogger Geoff Gerber promises to give us the answer. But for now, and in deference to the Soprano's final episode, I just have to say

And now the latest round in freelance photographer Jerry Greenburg's copyright battle with the National Geographic Society, which has taken an ominous turn for him in this, its tenth year in the federal courts.  His lawsuit is the latest skirmish along the borders of  Section 201(c) of the Copyright Act, which governs the allocation of copyrights in "collective works" such as magazines, anthologies and encyclopedias. His lawsuit--and especially this week's decision by the 11th Circuit in Greenburg v. National Geographic Society vacating his $400,000 judgment--is an excellent example of the judiciary's ongoing struggle to apply to new technology the legal principles that were forged on old technology.

But as with so much of the Copyright Act of 1976, new technologies have rendered Section 201(c) ambiguous at best and obsolete at worst.  When National Geographic released a 30-disk CD-ROM compilation of 108 years of monthly issues of the magazine, Jerry Greenburg sued for copyright infringement on the ground that the digital compilation included several of his photographs without his permission.  The National Geographic defended, arguing that its repackaging of the magazines containing Greenburg's photographs in the form of the CD-ROM compilation constituted nothing more than an allowed "revision of that collective work" under Section 201(c).

On the first appeal back in 2001, the Eleventh Circuit rejected the National Geographic's defense, holding that the computer program incorporated into the CD-ROM and the short introductory sequence went beyond the mere reproduction of the original magazines (which would have been allowed under § 201(c)) and instead constituted a new product "in a new medium, for a new market that far transcends any privilege of revision or other mere reproduction envisioned in § 201(c)." Greenburg I,  244 F.3d 1267, 1273 (11th Cir. 2001).

But three months later, the U.S. Supreme Court handed down its decision in Tasini v. New York Times, 533 U.S. 483 (2001).  Tasini involved the sale by various magazines and newspapers of the contents of their publications to electronic data bases such as LexisNexis.  The publishers in that case defended on the ground that electronic versions were merely "revisions" of the originals, and thus within the scope of their rights under § 201(c).  The Supreme Court ultimately disagreed, finding that the databases presented the articles "clear of the context provided either by the original periodical editions or by any revision of those editions," and thus concluding that it could not see how the database "perceptibly reproduces and distributes the article 'as part of' either the original edition or a 'revision' of that edition." Id. at 499-500.

In reaching that decision, the Supreme Court struggled for an analogy to old technology and found one in microfilm and microfiche, both of which present an individual freelance contribution in the context of the original collective work, surrounded by the original advertisements and other articles.  Without directly stating it, the Supreme Court suggested that a microfilm version of a periodical--as opposed to a data base version--would be privileged under § 201(c).

That microfilm analogy proved fatal to Jerry Greenburg's infringement claim.  As the Eleventh Circuit explained in Greenburg II, "Under the Tasini framework, the relevant question is whether the original context of the collective work has been preserved in the revision."  And because the CD-ROM reproduced the magazine issues in exactly the way they had appeared in print, the CD-ROM qualified as a "revision" under § 201(c).

The lesson here--as in the ongoing struggle over whether the Google AdWords program constitutes trademark infringement--is that successful advocacy consists of presenting your judge with an appealing old bottle into which he can pour your client's new wine.

Each use is an obvious commercial attempt to cash in on the widespread awareness and recognition of the original title.  Each use is also an obvious commercial attempt to capture the prospective buyer's attention, to stand out in a crowd of titles.

But are these uses "fair uses"?

This is good news for the porn world because the copyright standard is more rigorous and subtle than the trademark standard.  Under the copyright "fair use" test for parody promulgated by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the only potentially qualifying knock-off is a genuine "parody," which the Court defined as "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).  As Justice Souter cautioned, if the knock-off “has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes . . .” (Id.)  While I have not had the pleasure of watching Presumed Impotent, I suspect it is not a commentary on the main themes of Presumed Innocent.

By contrast, the focus of trademark law is likelihood of confusion.  I am willing to wager that no one could purchase Romancing the Bone -- complete with X-rated cover art -- in the belief that they will be watching Michael Douglas and Kathleen Turner in the Robert Zemeckis romantic adventure movie.

The more interesting -- and as yet unresolved -- issue is whether Saving Ryan's Privates constitutes trademark dilution of Saving Private Ryan.  The courts seem to apply a looser definition of "parody" in dilution cases, pointing out that an outrageous and obvious spoof actually actually enhances the distinctiveness of the original mark.  For example, the Tenth Circuit explained in Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1490 (10^th Cir. 1987), that use of the term “Lardashe” on jeans does not dilute the “Jordache” brand  because “parody tends to increase public identification of a plaintiff's mark with the plaintiff.”

But for now, let us take comfort in the words of a certain princess in an unnamed X-rated knock-off of a famous science fiction movie: "Is that a light saber in your robe, or are you just glad to see me?"

When I teach copyright fair use to my law school students, I stress how hard it is to pin down the key legal concepts or to make reliable predictions from past decisions.  For example, can you really draw a meaningful distinction between 2 Live Crew's use of all of the music and most of the key lyrical phrases from the song "Pretty Woman" in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), and Penguin Books' use of some of the art and some of the language from the works of Dr. Suess in The Cat NOT In the Hat, its witty riff on the O.J. Simpson trial in Dr. Suess Enterprises, Inc. v. Penguin Books USA, 109 F.3d 1394 (9th Cir. 1997)? The Ninth Circuit thought it could draw that distinction.  Penguin's pre-publication lawyers apparently did not.

But perhaps the science of statistics can provide the remedy to Mark Twain's complaint.  As I learned in William Patry's excellent copyright blog, Professor Barton Beebe of the Cardozo School of Law has completed an empirical study of all 306 U.S. copyright fair use opinions during the 28-year period from 1978 (the effective date of the new Copyright Act)  through 2005.  Although the results of that study will be published later this year in the Pennsylvania Law Review, you can read the article at Professor Beebe's website.  As he explains in his summary, his study "shows which factors and subfactors actually drive the outcome of the fair use test in practice, how the fair use factors interact, how courts inflect certain individual factors, and the extent to which judges stampede the factor outcomes to conform to the overall test outcome.  It also presents empirical evidence of the extent to which lower courts either deliberately ignored or were ignorant of the doctrine of the leading cases, particularly those from the Supreme Court. "  It is, indeed, a fascinating new look at how the various "fair use" factors affect the the outcomes of the cases.  Although Professor Beebe's work would not have satisfied Mark Twain, it does help the rest of us, including our clients, find a little more clarity in those muddy waters.

We begin with the magical opening paragraph of Circuit Judge Diane Woods' opinion in the Seventh Circuit's recent copyright decision in JCW Investments, Inc. v. Novelty, Inc.:

Meet Pull My Finger Fred.  He is a white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants.  Fred is a plush doll and when one squeezes Fred's extended finger on his right hand, he farts.  He also makes somewhat crude, somewhat funny statements about the bodily noises he emits, such as "Did somebody step in a duck?" or "Silent but deadly."

And we continue with a bevvy of beautiful babes in the buff, delivered compliments of a Google "Image Search" for the phrase "Perfect 10" that is the subject of the Ninth Circuit's recent copyright opinion in Perfect 10 v. Amazon.com.  These two cases -- whose fact patterns could have been selected by the cast of Porky's -- shed important light on two fair use issues.

Fred's infringement claim was straightforward, since there was evidence that the defendant had access to the Fred doll and there was a finding that Fartman was substantially similar to Fred -- or, as Judge Woods put it in a phrase that works on several levels, "the two dolls give off more than a similar air."  On appeal of the summary judgment entered against it, the defendant made a quasi-"fair use" argument, contending that it merely copied the unprotectable idea of a "typical man wearing jeans and a T-shirt in a chair doing the 'pull my finger' joke."  From there, defendant argued, it simply combined various elements in the public domain -- including standard fart jokes and middle-age man attire.

Judge Woods was not persuaded.  "Although it is not always easy to distinguish the idea from the expression," she wrote, "by the same token the task is not always hard."  Here, she explained "it is not the idea of a farting, crude man that is protected, but this particular embodiment of that concept."  Striking a blow against the cruel stereotype of middle-aged white guys in undershirts on Barcaloungers, she pointed out that the defendant could have made a completely different version of "a plush doll of a middle-aged farting man," namely, one with "a blond mullet," dressed in a flannel shirt, standing up, and "wearing shorts rather than blue plants."  On balance, the case draws a helpful distinction between idea and expression -- and thereby offers guidance to those hoping to enter this lucrative market and follow the sweet smell of success.

As for naked women, the Ninth Circuit addressed a more traditional "fair use" defense in the Perfect 10 case.  Perfect 10 had accused Google of infringing its copyrights in the photographs of its naked Perfect 10 models by reproducing them in the form of thumbnail images in its search results.  Google defended on "fair use" grounds, arguing that its use of the thumbnails was a "transformative use" in that the search engine turned the image into a pointer directing a user to a source of information.  The Ninth Circuit agreed, finding that the "use of thumbnails for search engine purposes is highly transformative."  The court rejected Perfect 10's claim of market harm on the ground that it had failed "to introduce evidence that Google's thumbnails would harm Perfect 10's existing or potential market for full-size images."  Perfect 10 had argued that the court could presume market harm if there was evidence that Google stood to gain commercially from using the material, but the Court rejected that argument, stating that in a "fair use" case "market harm" cannot be presumed.

This rejection of a presumption of market harm is a welcome result for those who believe in a vigorous "fair use" doctrine.  That is because any commercial use of a copyrighted work will, almost by definition, confer a commercial benefit on the user.  But the converse is often not the case.  Just because the copyright owner could have obtained a license fee from a use similar to the defendant's use does not translate into actual harm.  Courts need to fight attempts to draw parallels between intellectual property and ordinary property.  Unauthorized use of peresonal property -- such as hot-wiring your neighbor's riding lawnmower to mow your own lawn -- will constitute trespass and unjust enrichment regardless of actual harm to that property.  After all, if you used the mower when your neighbor was out of town and refilled the gas tank when you finished, where's the harm?  Even so, you're guilty.

But absent market harm to the owner of a copyright, an unauthorized use often can and should be a protected use.  And the Perfect 10 case is just such an example.

The question is hardly academic, since a "use in commerce" is a jurisdictional prerequisite under the Lanham Act. And it is hardly a settled question, as Judge Fogel's opinion makes clear.

But is it really? The AdWords dispute is just another example of courts struggling to apply old concepts to new technologies.  And whether the metaphor is old wine in new bottles or square pegs in round holes, the result is the same: a poor fit.  What seems at first like willful trademark infringement--"Hey, Google made money selling my trademark to my competitor!"--becomes a lot fuzzier on closer examination. Where is the use in commerce?  Indeed, where is the infringement? Your trademark does not appear anywhere in your competitor's sponsored link--not in the title or in the text of that link. Nor does it appear on any of Google's or your competitor's goods, containers, displays, or advertisements.  Indeed, it is, quite literally, invisible to the public.  Moreover, the risk of so-called "initial interest confusion" is minimal because the sponsored links are conspicuously differentiated from the regular search results--usually grouped at the top against a pink background or in a column on the far right, and always under a heading entitled "sponsored link."  The courts that have found this use to be a "use in commerce" appear to be motivated, at least in part, by a visceral reaction to a company running an advertising program that makes money off of the sale of  someone else's trademarks. But a compelling argument can be made that this is just a fair use which, outside the Internet context, is both common and non-actionable.  I drive past a good example of that every day on my way to work in downtown St. Louis.  As you approach Busch Stadium on the highway, you are confronted by a huge billboard advertising Miller Lite.  Friends in Milwaukee tell me that the approach to Miller Stadium is similarly obscured by a huge billboard advertising Budweiser. Talk about Pop-Up ads!  The billboard advertising agencies are the equivalent of Google, but are their "sponsored links" actionable? Of course not.

The bedrock of trademark law is protection of the public. We give trademark owners enforcement powers to help protect consumers from being misled by infringers.  But the bedrock of trademark dilution law is private property. Under dilution laws, we give trademark owners enforcement powers to help them protect the distinctiveness of their property from being eroded by others. Consumer confusion is not a concern in dilution cases.

This significant move from protecting consumers to protecting property rights, especially when famous marks are involved, creates significant First Amendment concerns—so much so that Congress created a safe harbor for “non-commercial use” of a famous mark, which courts have interpreted to include parody, satire and editorial commentary. Mattel, Inc. v. MCA Records, Inc. 296 F. 3d 894 (9th Cir. 2002).

But that safe harbor merely allows companies to engage in what the rest of do all the time, which is use famous trademarks in noncommercial ways that may blur or tarnish those marks. Who hasn’t used the Walt Disney Company’s most precious trademark derisively to label an incompetent organization “a Mickey Mouse operation”? A Type A boss and his lackey get labeled, behind their backs, as “Batman and Robin.” That too perfect couple are, of course, “Ken and Barbie.”

Indeed, as Judge Kozinski explained in Mattel, supra, 296 F.3d at 900, "Some trademarks enter our public discourse and become an integral part of our vocabulary. How else do you say that something's 'the Rolls Royce of its class'? What else is a quick fix, but a Band-Aid? . . . Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions.  Once imbued with such expressive value, the trademark becomes a work in our language and assumes a role outside the bounds of trademark law."

From “Wonder Bread” to “Wonder Woman,” we use famous marks in quintessentially dilutional ways, i.e., to describe goods and services unrelated to the marks. Whether it’s Irving Berlin originally, or Gene Wilder and Peter Boyle later in Young Frankenstein, the hotel's famous mark is used in the song “Putting on the Ritz.” More recently, two famous DC Comics marks served the rock group 3 Doors Down, whose hit song "Kryptonite" asks “will you still call me Superman?”

So feel free to look for Mr. Goodbar® or point out the Stealth® political candidate or get misty over  that Hallmark Cards® moment or mock the McMansion (with the Lawyer Foyer) going up in the next suburb. And rest assured that the Federal Trademark Dilution Act allows you snuggle up with that special someone known to you as Miss America® or Mr. Universe®.  But please, please avoid my high school basketball coach's favorite joke, which was to tell us that he was wearing his Burger King pants.  Why Burger King? Because, he explained, they were The Home of the Big Whopper®.