Fair Use Generally
Does this phrase seem familiar – “All rights reserved”? If you have (and you would probably have) it’s a copyright notice, telling you that you cannot reproduce the art / text / item, because it’s copyrighted. And that’s what copyright law does – it stops people from *copying* things. But as copyright laws go, there’s a small subset of the law which allows people to borrow and reproduce works within a limited scope, called “fair use”.
“Fair use”, in simple terms, is where you can make use of a copyrighted work, in limited contexts.
Provisions in The Berne Convention
The oldest convention in the world on copyright, the Berne Convention, contains several relevant articles (provisions) on this point. Article 9(2) allows national legislation in countries to determine what can be reproduced, provided it isn’t considered “normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.”
Articles 10 and 11 allow for “free use”, in several circumstances. First, making quotations from a work which has already been made available to the public, provided the quotation is in line with “fair practice”, and does not exceed required for the purpose. Second, based on national legislation, the use of literary and artistic works by way of illustrations for educational (teaching) purposes. Third, based on national legislation, permitted usage for news articles (or periodicals) and broadcasts.
In all these cases, proper attribution is required, i.e. the description of the creator and the source work must be included.
Similar Provisions in TRIPS
Article 13 of the TRIPS agreement is similar to article 9(2) of the Berne Convention, by allowing its members to have exceptions to exclusive copyright in “special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.”
Fair Dealing in Malaysia
Here in Malaysia, the Copyright Act 1987 calls it “fair dealing” and “fair practice”, instead of “fair use”. The Malaysian Copyright Act allows for:
- Reproduction of a typographical arrangement of a published edition, which is in line with fair dealing, under section 9(4);
- National archives and libraries may reproduce a typographical arrangement of a published edition, for public interest if compatible with fair dealing under section 9(5);
- Others dealings with the copyrighted work under section 13(1) which are compatible with “fair dealing”, for research purposes, criticism, private study, review, or reporting of current news events.
What is “fair dealing” under the Copyright Act 1987 is not explicitly defined, but it shall be determined, under section 13(2A), by reference to:
- the purpose and character of the dealing, including whether such dealing is of a commercial nature or is for non-profit educational purposes;
- the nature of the copyright work;
- the amount and substantiality of the portion used in relation to the copyright work as a whole;
- the effect of the dealing upon the potential market for or value of the copyright work.
Fair Use in the USA.
Under section 107 of the Copyright Act, “fair use” of a copyrighted work is allowed for purposes such as review, criticism, comment, news reporting, scholarship, and research.
Similar, what is “fair use” is also not defined under the USA Copyright Act, but section 107 requires that it be determined with reference to:
(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.
Looks like it’s pretty similar to the Malaysian statutory provisions, or vice versa, and that’s probably a fair use case for public interest.
And it also requires sufficient acknowledgement of the original source and author.
Fair Dealing in UK
Under the Copyright, Designs and Patents Act 1988, “fair dealing” includes:
- Fair dealing with a work for research purposes for a non-commercial purpose (section 29(1));
- Fair dealing with a work for private study (section 29(1C));
- Fair dealing with a work for criticism or review (section 30(1));
- Quoting from a work, which has been made available to the public, to the extent required for the purpose (section 30(1Z));
- Fair dealing with a work (other than a photograph) for reporting of current events (section 30(2));
- Fair dealing with a work for caricature, parody, or pastische (section 30A(1));
- Fair dealing with a work for illustration for instruction, for a non-commercial purpose by the instructor (section 32(1));
- Fair dealing with a performance, or recording of a performance, for purposes of non-commercial research (paragraph 1C, Second Schedule);
- Fair dealing with a performance or its recording, which has been made available to the public, for criticism or review (paragraph 2(1), Second Schedule);
- Fair dealing with a performance or its recording, for the purpose of reporting current events (paragraph 2(1A), Second Schedule);
- Fair dealing with a performance or its recording, for purposes of caricature, parody or pastiche (paragraph 2A(1), Second Schedule);
- Fair dealing with a performance or its recording, for the purpose of illustration for instruction, for non-commercial purpose, by the instructor (paragraph 4(1), Second Schedule).
It appears as though the UK Copyrights, Designs and Patents Act does not have a definition for what is “fair dealing”.
Some Cases on Fair Use / Fair Dealing
Since “fair use” and “fair dealing” are substantial defences in copyright law, the lack of an explicit definition in statute is quite concerning. Indeed, Lord Denning in the case of Hubbard v. Vosper  2 QB 84, commented that, “It is impossible to define what is ‘fair dealing’. It must be a question of degree.”
Why the drafters of such legislation decided not to define the terms “fair use” or “fair dealing”, must seem quite baffling. If the intention was to allow a wide interpretation of the terms, then it could be indicated through a non-exhaustive definition, which includes, rather than excludes, and which at least lays down the basic definition.
Nevertheless, throughout the years, a number of US-based cases have shed light on what is acceptable as “fair use”. Here we will summarize some of the “fair use” cases. (Unfortunately, they are all US-based cases.)
Patrick Cariou v. Richard Prince, 714 F.3d 694 (2d Cir. 2013)
In 2000, a photographer named Patrick Cariou printed a book of photographs that he had taken of the Rastafarian people. A few years later, Richard Prince, an artist, “borrowed” some of Cariou’s photographs for his paintings and collages.
Prince differed in treatment of various artworks he appropriated: in some, he took entire photographs, modifying them only slightly; in others, he took only parts of Cariou’s photographs.
Prince exhibited these works in 2007 and 2008 in an art gallery, Gagosian Gallery, owned by a certain Larry Gagosian. Gagosian, to promote the exhibition, published Prince’s works in its catalogue.
Mr Cariou sued both Prince and Mr Gagosian for copyright infringement. In response, they raised “fair use” as a defence.
At the district court (i.e. the court of first instance), the court ruled in favour of Mr Cariou. The district court judge considered the four factors of “fair use”, and held that Mr Cariou’s rights had been wronged:
- The purpose and character of the “fair use” required there be a comment on the original work, but since there was minimal commentary, there was minimal transformation as well;
- The nature of the copyrighted work was highly creative and should be protected;
- The amount taken for the “fair use” was excessive;
- The effect was the “fair use” works unfairly usurped the market for the originals.
On appeal, at the Second Circuit, the court held that “the law does not require that a secondary use comment on the original artist or work”. In other words, the first “fair use” factor was not as important as thought of by the district court. The Second Circuit court went on to hold that all except five of Mr Prince’s work made fair use of Mr Cariou’s photographs. It was only with regards to the remaining five works that the court considered, whether there was a fair use defence.
The Second Circuit considered the words of Judge Pierre Leval:
“copyright is not an inevitable, divine, or natural right that confers on authors the absolute ownership of their creations. It is designed rather to stimulate activity and progress in the arts for the intellectual enrichment of the public. Fair use is necessary to fulfill [that] very purpose.”
Because “‘excessively broad protection would stifle, rather than advance, the law’s objective,’” fair use doctrine “mediates between” “the property rights [copyright law] establishes in creative works, which must be protected up to a point, and the ability of authors, artists, and the rest of us to express them- or ourselves by reference to the works of others, which must be protected up to a point.”
The court recognised that “fair use determination is an open-ended and context-sensitive inquiry”, but also recognised that the “ultimate test of fair use . . . is whether the copyright law’s goal of ‘promoting the Progress of Science and useful Arts’ . . . would be better served by allowing the use than by preventing it.”
Looking at the first factor, the purpose and character of the fair use, they recognised that Prince’s work was commercial in nature, but did not put much weight due to the transformational nature of Prince’s work.
Looking at the fourth factor, the effect of the “fair use”, the court asked itself whether the “fair use” had created something that usurped the market for the original work. The court found that a lady called Celle was interested to do an exhibit with Cariou on the Rastafarian art, but did not follow through because Celle mistakenly believed that Cariou had already done one with Prince.
The court held that the fourth factor was not fulfilled: Celle had been mistaken that Cariou had done an exhibition with Prince (not correct), and secondly, both Cariou and Prince catered to different kinds of customers. There was nothing to suggest that Prince’s work would cause people to stop purchasing Cariou’s work.
Cariou printed 7,000 copies of the book, and sold many below the listed price of $60, ultimately making about $8,000 in royalties from the book. On the other hand, Prince actively marketed his works to affluent people, and his works regularly sold above $1,000,000.
With regards to the copyrighted work, it was clear that Cariou’s work was commercial in nature; but the court found that it was not helpful, especially when the use was for creating art with a transformative purpose.
The final factor was the amount and substantiality taken. After examining the original pictures, the court held that the five pictures were to be remanded to the original district court, so that the original district court could make a decision on them.
Later, the parties settled the matter out of court, pending the remand to the district court.
Michael Kienitz v. Sconnie Nation, LLC, 766 F.3d 756 (7th Cir. 2014)
Michael Kienitz is a photographer who took a photograph of Paul Soglin, a former mayor of Madison, Wisconsin. In his youth, Paul Soglin had been a bit of an anti-establishment rebel.
A printing and t-shirt company, Sconnie Nation, LLC, made use of a picture of Paul Soglin, which Michael Kienitz had taken, to make a t-shirt with the words, “Sorry For Partying”.
In fact, the photo referred to the parties that the mayor, Paul Soglin, had attended in his youth, but was now trying to shut down as a mayor. The photographs had also been altered significantly.
Not satisfied, Kienitz sued Sconnie Nation alleging that Sconnie Nation had managed to sell 54 t-shirts, and profited from Kienitz’s photograph.
The court noted that the photograph had been posterized, the background removed, Soglin’s face turned lime green, and surrounded by multicoloured writing. Sconnie Nation raised a “fair use” defence.
The court expressed its skepticism with the decision in Cariou v Prince, noting that the “transformative” approach could override not only the list of “fair use” factors in section 107, but also section 106(2) which protects derivative works.
Instead, sticking with section 107, the court found that, firstly, a t-shirt or a tank top is no substitute for a photograph, and that Mr Kienitz did not himself express any plans to license his photograph for apparel. Next the court found that, with regards to the amount taken, “Defendants removed so much of the original that, as with the Cheshire Cat, only the smile remains.”
Interestingly, the court also mentioned that the defendants could have obtained pictures of Soglin from other sources, or even taken pictures of Soglin themselves, and the quality of the picture actually borrowed from Kienitz was of a poor resolution – something which they could have easily found a substitute. The goal was to mock the mayor, not to comment on Kienitz or his skills as a photographer.
Interestingly, the court observed: “The fair use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors. (Many copyright owners would block all parodies, for example, and the administrative costs of finding and obtaining consent from copyright holders would frustrate many academic uses.)”
Dereck Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013)
This is another photograph-related case. Dereck Seltzer, a photographer, created the Scream Icon in 2003. The Scream Icon is a picture of a contorted, screaming face. Seltzer commercialized his Scream Icon by making posters and smaller prints, which he sold, and gave away. Many of his Scream Icon posters were pasted on the walls of Los Angeles. Seltzer occasionally used the Scream Icon to identify his studio, and at one point, licensed out his Scream Icon for a music video.
One of the Defendants was Roger Staub, a photographer and professional set-lighting and video designer. In 2008, Staub photographed a brick wall in Los Angeles covered in graffiti and posters—including a weathered and torn Scream Icon poster.
In 2009, Green Day released their album, 21st Century Breakdown. Green Day engaged a company, Performance Environment Design (PED) to create the concert backdrop, pyrotechnic effects, and lighting. In turn, PED engaged Staub to create the video backdrop for Green Day’s performances.
For the song, “East Jesus Nowhere”, Staub felt that the theme was about violence committed in the name of religion. He was motivated to create a backdrop that ultimately made use of the Scream Icon, but drew a red cross on top of it. The original colours of the Scream Icon poster was also modified to fit the mood of the song, together with some black streaks and changes in the contrast.
In the video as well, there were street artists and graffiti painters painting various art in the background, including images of Jesus Christ, which were painted three times, and destroyed a similar number of times.
The video background by Staub was used in about 70 of Green Day’s concerts, in 2009, and also in Green Day’s performance of the song at the MTC Music Awards of the same year. On 24 September 2009, Seltzer wrote to Green Day about the use of his “Scream Icon”, and wanted to “work out a resolution”, but none came from Green Day. Seltzer registered his copyright, and on 19.11.2009, his lawyer sent a cease-and-desist note. Green Day instantly stopped using the video backdrop.
In March 2010, Seltzer sued Green Day and related parties, who in response, raised a “fair use” defence. The court gave a summary judgment in favour of the Defendants (Green Day et al), and further awarded attorney’s fees against Seltzer. (About $201,000).
Seltzer appealed the decision. The court considered afresh the section 107 “fair use” defence.
With regards to the first “fair use” factor, the court considered the “transformation”, as defined in Campbell v Acuff-Rose Music Inc (1994), as follows: “the new work . . . adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”
It also quoted Judge Pierre Leval in a 1990 article: “The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test; in Justice Story’s words, it would merely “supersede the objects” of the original. If, on the other hand, the secondary use adds value to the original—if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”
Taking this approach, the court found that the music video had clearly “transformed” the original “Scream Icon”. The Scream Icon had become a component in a music video which carried a bigger message about violence and religion. The addition of the cross, as well as the use of Jesus’ image, had infused the video with meaning. These elements were not present in the original image.
The court also noted that Seltzer’s deposition had somewhat of an acknowledgement that Green Day’s music video had “tainted the original message of the image and made it synonymous with lyrics, a video and concert tour that it was not originally intended to be used with.”
Not only was the court of the opinion that the use of the Scream Icon “transformational”, it was also “incidentally commercial”, because it was never used to market concerts, CDs and merchandise. Thus the first factor was in favour of the Defendants.
With regards to the second “fair use” factor, i.e. the nature of the copyrighted work, the court considered that the Scream Icon had been published and disseminated widely by Seltzer. By virtue of its publication, which was Seltzer’s own doing, the “fair use” claim of the Scream Icon was more favourable for the Defendants. The second factor was slightly in Seltzer’s favour.
With regards to the third “fair use” factor, i.e. the amount taken, the court found that the Scream Icon was not meaningfully divisible. This meant that even though Green Day had copied a large amount of the Scream Icon, it would not matter if the portion taken was only for the purpose necessary. The court said that ‘the use of the entire work was necessary to achieve Green Day’s “new expression, meaning or message.”‘ The third factor was neutral and did not favour Green Day.
With regards to the fourth “fair use” factor, i.e. the effect of the infringing work on the market for, or value of, the original work, the court considered whether the infringing work would have an adverse impact on the potential market of the original copyrighted work. Seltzer, in his deposition, repeatedly told the court that he didn’t care if the value of his work was unchanged; he was just unhappy that Green Day’s use of the Scream Icon had tarnished the value of Scream Icon for him. Despite Seltzer’s unhappiness, it wasn’t a relevant factor, so the court found that the fourth factor was in Green Day’s favour.
The court also considered Seltzer’s claims under the Lanham Act, which extends liability for wrong use of any mark, symbol, etc. that could cause confusion, mistake, or deceive others as to the affiliation or connection of a person. (Similar to passing off.) The court found that Seltzer had failed to use the Scream Icon as a trademark. Therefore the summary judgment was correctly granted against Seltzer.
As for the costs, the court found that the case was a difficult case, and Seltzer’s claim was not obviously unreasonable, as the district judge had found. Out of the four “fair use” factors, two were in Green Day’s favour, one was in Seltzer’s favour, and one was neutral. Therefore, the court did not award the costs in favour of Green Day.
The issue of “fair use” obviously has a lot of implication for creative works. Artists often borrow the artwork, text, and music from various sources of inspiration. This would inevitably lead to disputes as copyright protection can cover quite a long period of time. In many countries it is the lifetime of the author plus fifty years; some even longer. In the US, it is the lifetime of the author plus 70 years. Hence, a defence of “fair use” is important. For this author, the similarity between Malaysian and US statutory provisions regarding “fair use” means that some of these decided cases may one day be weighed as precedent in a Malaysian copyright court.
Thank you for reading.
This article has been prepared as general information and is not intended to serve as legal advice. Please reach out if you wish to speak with someone about fair use / fair practice / fair dealing in copyright law.