Legal News You Can Use
by Andrew Berger
Profiting from your creative works has become increasingly difficult. Publishers demand that you give them all rights. When you post works on the Internet, many viewers believe they are free for the taking. Because your works now move across the globe with the click of a mouse, it may no longer be possible to police their use.
In this marketplace, your creative talents are not enough. You also need access to legal information you can use in your business. This newsletter is designed to help fill that need. Each issue will focus on a recent copyright case and the guidance it provides.
Parody
This first issue of Legal News You Can Use looks at parody. A parody is a literary or artistic work that targets or imitates the characteristic style of an author or a work for comic effect or ridicule. Your work may be the subject of a parody or you may decide to create a parody of another's work. In either case the key question is: when is a parody protected as fair use under the Copyright Act?
The case of Mattel v. Walking Mountain Productions ("Mattel") helps answer this question. There, Thomas Forsythe, a professional photographer, created more than 70 photographs that parodied the Barbie doll. Mattel, not pleased that its billion-dollar Barbie line was the subject of ridicule, sued Forsythe for copyright infringement. After 4 years of litigation, Mattel lost its case and had to pay Forsythe's legal fees and expenses totaling more than $2 million.
I outline the court's decision below and then provide suggestions about creating parodies that meet the standards in Mattel.
The Mattel Case
Thomas Forsythe, a Utah-based professional photographer, created photos called "Food Chain Barbie" to criticize the objectification of women and the impossible beauty myth the Barbie dolls represent. Forsythe's photographs show the doll in various imaginative and often sexualized positions. Some like "Mixer Fun" depict Barbie being attacked by kitchen appliances. Others like "Barbie Enchiladas" (see photo below) show the doll wrapped in tortillas and covered with salsa in a casserole dish in a lit oven.
Although Forsythe's photos generated only $3,600 in revenues, Mattel sued him for copyright infringement. Forsythe successfully argued to the district court that his photographs were fair use under the Copyright Act. The Ninth Circuit Court of Appeals affirmed that result.
The Fair Use Factors
When determining whether a work constitutes fair use, courts engage in a case-by-case
analysis and a flexible balancing of four factors in the Copyright Act. They
are:
1. the purpose and character of the use;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion of the copyrighted work used
in relation to the work as a whole; and
4. the effect of the photos on the potential market for the copyrighted work.
The first factor asks whether the parody adds something new to the old work or transforms it by giving it a different purpose or character.
The circuit court easily found that Forsythe's photos met this standard. The court stated that Mattel's ads show Barbie as the "ideal American women" and a "symbol of American girlhood." Forsythe's photos were transformative because they turned this image of Barbie "on its head." Forsythe's "lighting, background props and camera angles" displayed "a carefully positioned, nude and somewhat frazzled looking Barbie in often ridiculous and apparently dangerous situations."
The circuit court noted the "commentary that Forsythe intended" and "the harm that he perceived in Barbie's influence on gender roles and the position of women in society." Whatever the viewer may feel about Forsythe's "message-whether he is wrong or right, whether his methods are powerful or banal-his photographs parody Barbie and everything Mattel's doll has come to signify."
The court also said that Forsythe's profit expectations did not doom his fair use defense given the extremely transformative and parodic quality of his work.
The second factor, the nature of the copyrighted work, weighed slightly in favor of Mattel because of the creative nature of the Barbie figure and face. But the circuit court found this factor insignificant because most parodies target publicly known creative works.
The third factor, the amount and substantiality of the portion of the old work used, weighed in Forsythe's favor. Parodic works often borrow much more than the absolute minimum from the copyrighted work. That is because an effective parody springs from the recognizable relationship between its target and its distorted imitation. The circuit court stated that the more transformative the parody the more it could copy from the original.
The fourth factor is the most important. It requires courts to consider whether the parody will substitute in the marketplace for the targeted product and thus likely harm its sales. This factor also weighed in Forsythe's favor. The circuit court stated it was not enough that the biting criticism of Forsythe's photos might suppress demand for the Barbie line of products. In other words, simply because a lethal parody like a scathing review of a play shrinks attendance at the play does not make the parody an infringement. Instead, the circuit court stated only when the parody and its target serve the same market would there be market harm.
The circuit court found that Forsythe's photos served a different market than the Barbie line. His adult oriented and often sexualized photos were not likely to preempt demand by children for Barbie products. Nor were Forsythe's photos likely to have any impact on Mattel's market for potential derivative uses of Barbie products.
Award of Attorneys' Fees
The Ninth Circuit sent the case back to the district court to decide whether to require Mattel to pay Forsythe attorneys' fees as the prevailing party. The district court looked at two primary factors in making this determination: (a) whether Mattel's claims were objectively unreasonable; and (b) whether Forsythe's successful defense of the action furthered the purposes of the Copyright Act.
The district court found both factors weighed in Forsythe's favor. The court stated that "Mattel (a large corporation) brought objectively unreasonable claims against an individual artist. This is just the sort of situation in which this Court should award attorneys' fees to deter this type of litigation." The court also found that Forsythe's defense advanced the Copyright Act by more clearly defining the boundaries of fair use parodies and by encouraging further creative works of this kind. The court ordered Mattel to pay Forsythe's legal fees of $1.8 million and his court costs of $241,000. Forsythe advises that Mattel has now paid in full.
Lessons to Be Learned
A. A Brand Conscious World. Because the integrity of a brand is so important, the more critical your parody, the more likely it will prompt a copyright infringement suit, even if the parody generates as little money as did Forsythe's photos.
B. Take Direct Aim. Make sure that your parody focuses on the target. Your parody will not be fair use if it simply borrows the general style of its target or places the characters from a familiar work in novel or eccentric poses. But the target does not have to be the sole focus of the parody.
C. Make Sure Your Parody Does Not Compete. Although you may market your parody for profit, be careful that it does not compete in the same market as your target. For instance, the result in Mattel might have been different if Forsythe had created doll-like parodies of Barbie that appealed to same gender and age group Mattel served.
D. Don't Expect to Recover Your Attorneys' Fees. In most cases, you will not recover your attorneys' fees from your adversary for several reasons. First, most litigations are settled before trial and settlements rarely provide that the other side will pay your attorneys' fees.
Second, if you are a plaintiff and at trial win substantial damages for copyright infringement, a court may conclude that you have been sufficiently compensated. Therefore, the court may believe you do not need to further punish the defendant by recovering your attorneys' fees. Or a court may feel that the defendant had some objectively reasonable basis for its defense of the case, even if that defense later proved unsuccessful.
Third, a plaintiff, can only recover her attorneys' fees when she has timely registered her copyrights. Timely registration means at any time before your copyrights were infringed. When you register after the infringement, your registration will not be timely for purposes of recovering attorneys' fees if you registered more than 3 months after your work was initially published.
If you are a defendant, registration is unnecessary. But you will have the same burden of showing that the plaintiff had no objectively reasonable legal basis for its copyright claims. If you are defending your parody, you will improve your chances of winning an award of attorneys' fees by showing that your adversary tried to silence your critical attack on its product through meritless claims.
E. Mattel Will Likely Be Followed Elsewhere Although Mattel was decided by the Ninth Circuit Court of Appeals, other circuit courts are likely to follow it because of Mattel's persuasive reasoning and because that case drew heavily on an earlier United States Supreme Court opinion.
In summary, Mattel makes it clear that a parody may be fair use. That means that, if a parody of your work satisfies the standards in Mattel, you may have to suffer the parody in silence. At the same time, Mattel gives you helpful suggestions about to create a parody and withstand the court challenge to it that may follow.
Copyright 2005 Andrew Berger
This newsletter is general in nature and provides information to our clients and friends. It is not intended as a substitute for legal advice or a legal opinion given in response to a specific set of facts and should not be relied on for that purpose. If you wish additional information about the above or have questions, please contact Andrew Berger at (212) 702-3167; berger@tanhelp.com .
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Andrew Berger
Tannenbaum Helpern Syracuse & Hirschtritt LLP
900 Third Avenue
New York, NY 10022
Tel: (212) 702-3167
Fax: (212) 371-1084
www.tanhelp.com