Wolff and Samson

For producers of documentaries and biographies, it is not always possible to predict whether a particular use will be considered fair
America cannot get enough of its movie stars, rock musicians, sports stars and other celebrities. One need look no further than the local newsstand or fan-Web site to fully appreciate the premium placed upon the stories behind the lives of such cultural icons. In recent years, the public's desire for a glimpse into the lives of such entertainers has placed the demand for documentaries and biographies of such individuals at an all-time high. Scores of television networks thrive on offering daily tell-all, behind-the-scenes documentaries and biographies which reveal the details of the life, history, scandals and works of a number of entertainers currently (or even formerly) in the public eye. If appropriately timed to coincide with events which maximize the public's interest in their subject matter, such documentaries and biographies are virtually guaranteed high ratings and financial success.

The production and distribution of such shows, however, comes with certain inherent risks. To adequately tell the story of the authors of creative works, it is quite often necessary to reproduce, display or perform portions or aspects of their works - otherwise, it would prove difficult to produce a coherent and entertaining commentary, critique or analysis of the lives and works of such individuals. For example, to relate the life of the renowned author J.R.R. Tolkien in a comprehensive and more than superficial way, one should provide excerpts from or a recounting of his novels, as those works provide key insight into his life. If the creative works are discussed or critiqued, it is almost axiomatic that the works themselves must be reproduced, displayed, performed or recounted in some manner or degree to provide the requisite context and frame of reference. How could one adequately comment on themes present in Tolkien's novels if he could not explain the character of Frodo Baggins or quote the language of the author himself in describing the events of the characters' journey? Such reproduction, display or performance, however, may constitute copyright infringement under certain circumstances, potentially resulting in the imposition of various civil and criminal penalties, including injunctive relief, actual or statutory money damages and attorney's fees and costs.

In general, absent certain justification or defenses, one may not exercise any of the rights which are exclusively enjoyed by the owner of a copyright in a work, including the rights to reproduce, distribute, publicly perform or display (as applicable), or make derivative works from the copyrighted work. One such defense is the affirmative defense of "fair use." If the use of the copyrighted work in the documentary or biography constitutes a fair use, there is no infringement. (Note: although fair use may constitute a defense to copyright infringement claims, it is not likely to protect against numerous other claims which can arise out of the use of underlying works, including trademark infringement claims, right of publicity and privacy claims, defamation claims, and other related causes of action.) Unfortunately for producers and distributors of such documentaries and biographies, it is not altogether possible to predict whether a particular use will be considered fair. Fair use comes down to an equitable balancing that ultimately leaves users of copyrighted works open to significant risks.

The Fair Use Balancing Act
The fair use defense applies to certain types of use of copyrighted works, namely uses which are made "for purposes such as criticism, comment, news rep0l1ing, teaching..., scholarship, or research." 17 U.S.C. § 107. In determining whether a particular use constitutes a fair use, courts must consider the following nonexhaustive list of factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. See Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., 342 F.3d 191, 197 (3d Cir. 2003). Each factor is to be explored and weighed in light of the others, with no one factor being dispositive. See Campbell v. A cuffRose Music, Inc., 510 U.S. 569, 577-. 78 (1994).

As the fair use defense is used to give courts latitude to ensure that the copyright law is not mechanically applied to preclude "creative activity" for the public good, the test for determining whether a use is fair is subjective and fact-intensive. Much to the dismay of biographers and documentarians, short of a finding by a court, there is no definitive way to know if a particular use of copyrighted material constitutes a fair use.

In evaluating the purpose and character of the use, the court must determine whether the new work's use of the original work is "transformative." This inquiry involves a determination of whether the new work merely "'supersede[s] the objects' of the original creation.. .or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message..." Campbell, 510 U.S. at 579. Continuing the Tolkien example, is the documentary or biography a new, expressive work commenting on Tolkien and his works which uses excerpts from The Lord of the Rings novels to provide context to and fuel for the critique, or is the new work really more of a compilation of excerpts from the novels?

In addition, the court must examine, as a sub factor, whether the use is for commercial purposes. See NXIVM Corp. v. The Ross Institute, 364 F.3d 471,478 (2d Cir. 2004). As such activities as news reporting, comment, criticism, teaching, scholarship and research are "generally conducted for profit," the "more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use." Campbell, 510 u.S. at 579, 584.

Fictional, creative works are closer to the "core" of copyright protection than primarily factual works. See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 563 (1985). Thus, the creative nature of the copyrighted work will weigh against a finding of fair use.

The amount and substantiality of the portion used in relation to the copyrighted work as a whole is considered both qualitatively and quantitatively. This factor favors copyright holders where the portion used is the essence or "heart" of the copyrighted work, or the use involves a significant percentage of the copyrighted work. See NXIVM Corp., 364 F.3d at 480. For instance - how much of the text was copied, and were the key scenes or dialogue used? Courts also consider whether the amount of material used was reasonable in relation to the purpose of the copying. Id.

The inquiry into the potential effect upon the market for the copyrighted work concerns whether the use usurps the market for the original work, including certain potential licensing markets for the original work. Courts will determine whether the use at issue, or the "unrestricted and widespread conduct of the sort engaged in by the defendant," will "supplant the potential market for the original." Abilene Music, Inc. v. Sony Music Entertainment, Inc., 320 F. Supp.2d 84, 93 (S.D.N.Y. 2003) (quoting Campbell, 510 U.S. at 590). In addition to examining the effect on the market for the copyrighted use, courts will also examine the effect of the use upon the value of the copyrighted work, which can go beyond monetary rewards. See Video Pipeline, Inc., 342 F.3d at 202.

Despite not being included in the factors listed in the statute, a defendant's exercise or absence of good faith is occasionally considered by courts in the fair use analysis. See Bill Graham Archives, LLC v. Darling Kindersley Limited,</iFisher v. Dees, 794 F.2d 432, 436-37 (9th Cir. 1986)).

Thoughts To Consider
The producers and distributors of documentary and biographical works should consider the following points and recommendations in their attempt to navigate the potential pitfalls of fair use:
1) Consider seeking approval or a license from the. copyright owner. Requesting a license is not an admission that the intended use of the copyrighted work is not a fair use. The Supreme Court has recognized that licenses are frequently requested where no license is needed, due to a good-faith effort to avoid litigation. See Campbell, 510 U.S. at 585, n.18. Moreover, the making of such a request for a license could be viewed by a court as acting in good faith.

2) Less is more. Give substantial thought to what aspects or portions of the copyrighted work are absolutely necessary to the new work, and those which need not be used. Remember that copyright law protects expression, not facts themselves. Attempt to take as little protected expression as possible from the copyrighted work, and to avoid (to the extent possible) taking the most memorable, notable and striking portions or aspects (i.e., the essence) of the copyrighted work. Also, be careful to identify what particular rights may be implicated by the use (e.g., the right to prepare derivative works, the reproduction right, the distribution right, etc.), as well as the particular underlying work which is being used (e.g., use of a sound recording or film footage vs. the underlying musical composition or screenplay).

3) Make a transformation. Don't seek to simply show or portray the copyrighted work in a compilation or new medium. Fair use protects commentary, criticism and scholarlyanalysis - be sure to provide sufficient creative elements and input to form an entirely new work, rather than simply creating a new or convenient source or context for the copyrighted material. Moreover, the creation of a transformative work may help narrow or limit those licensing markets which are recognized by the court as available for exploitation by the plaintiff. See Bill Graham Archives, LLC, 2005 U.S.Dist.LEXIS at *19-25.

This article is reprinted with permission from the July 18, 2006 issue of the New Jersey Law Journal. @2006 ALM Properties, Inc. Further duplication without permission is prohibited. All rights reserved.

Howard J. Schwartz hschwartz@wolffsamson.com is a partner in and co-chair of the Intellectual Property Group at Wolff & Samson PC. and practices in all aspects of intellectual property law, including patents, trademarks, copyrights and trade secrets. Michael J. Gilleece is Senior Counsel, Americas Ansell Limited (Legal Department).
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