Copyright Essentials – Infringement and the Parody Fair Use Test!

Case Citation.  Involved in a copyright or trademark parody case?  call us at (877) 276-5084.

Case:   Rogers v. Koons, 960 F. 2d 301 (2d Cir. 1992).

Court: United States Court of Appeals for the Second Circuit

SUMMARY:

Defendant was a sculptor who instructed his artisans to copy a portrayal of a couple and their puppies in a photograph which was taken by the plaintiff professional photographer on a copyrighted note card. The Defendant tore the copyright notice off the card before he sent it to the artisans. The Court affirmed summary judgment against the defendant and a contempt order for failing to turn over four copies of the resulting wood sculpture.

FACTS:

Plaintiff, Art Rogers, was a 43-year-old professional artist-photographer. His work had been displayed all over the world and as part of the permanent collection of various elite museums. In 1980, an acquaintance, Jim Scanlon, commissioned Rogers to photograph his eight new German Shepherd puppies. Rogers made the decision to photograph the puppies with Scanlon and his wife holding them. Substantial creative effort went into both the composition and production of “Puppies,” a black and white photograph. The Scanlons purchased their prints for $200. Afterward, “Puppies” became part of Rogers' catalogue of images available for further use. “Puppies” has been used and exhibited multiple times. It has been sold as prints and licensed for use.

Defendant Jeff Koons was a 37-year-old artist and sculptor residing in New York City. Between 1980 to 1990 Koons exhibited his works in approximately 100 Group Exhibitions and in eleven one-man shows. Koons' work routinely sold at over $100,000. Koons was represented by Sonnabend Gallery, New York, Donald Young Gallery, Chicago, and Galerie Max Hetzler, Cologne, Germany.

In 1986, Koons began preparing for a 1988 exhibition called the “Banality Show.” Koons' worked in a tradition wherein once the artist finished his work, the meaning of the original object had been extracted and an entirely new meaning set in place. Koons acknowledged that the source for “String of Puppies” was a Museum Graphics notecard of “Puppies” which he purchased in a “very commercial, tourist-like card shop” in 1987. He tore off that portion showing Rogers' copyright of “Puppies.”

Koons gave the picture to his artisans and told them to copy it. During this process, Koons communicated extensively with Demetz Studio. He visited once a week during the period the piece was being carved by the workers and gave them written instructions. In his “production notes” Koons stressed that he wanted “Puppies” copied faithfully in the sculpture.

“String of Puppies” was displayed at the Sonnabend Gallery, which opened the Banality show on November 19, 1988. Three of the four copies made were sold to collectors for a total of $367,000. Koons kept the fourth copy.

PROCEDURAL HISTORY:

Rogers brought this action against Koons and Sonnabend Gallery on October 11, 1989. The district court held oral argument on November 26, 1990. On December 10, 1990, the district court ruled against Koons and found that his copying of “Puppies” was not fair use.

On May 28, 1991, the Court denied Koons' motion to stay the injunction and the contempt penalty pending appeal but delayed the commencement of the daily fine until June 7, 1991.

ISSUE:

Was Koons' use of the “Puppies” photograph in his sculpture “String of Puppies” fair use given that the sculpture looked nearly identical to the photo?

RULE OF LAW:

To establish infringement of a copyright, a plaintiff must show:

(1) ownership of a copyright;

and

(2) that defendant copied the protected material without authorization.

See Weissmann v. Freeman, 868 F.2d 1313, 1320, 10 U.S.P.Q.2D (BNA) 1014 (2d Cir.).

A certificate of registration from the U.S. Register of Copyrights is prima facie evidence of a valid ownership of a copyright. 17 U.S.C. § 410(c).

Section 107 of the Copyright Act states that an original work copied for purposes such as criticism or comment may not constitute infringement, but instead may be a fair use.

Fair use factors include:

(1) the purpose and character of the use,

(2) the nature of the copyrighted work,

(3) the amount and substantiality of the work used,

and

(4) the effect of the use on the market value of the original. 17 U.S.C. § 107.

ANALYSIS:

1. Ownership of Copyright in an Original Work of Art

 The Defendants asserted that the portion of Rogers' work that was allegedly infringed was not an original work of authorship. The Court noted that originality can be shown in a photograph by posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved. The Court held that the plaintiff's artwork was original.

1. Unauthorized Copying by Defendant

The Court noted that the plaintiff must also demonstrate that defendant Koons copied his protected work without authorization. The Court agreed with the trial court that no reasonable juror could find that copying did not occur in this case.

The Court cited Koons' admission that he gave a copy of the photograph to artisans with instructions to copy the work and evidence that Koons' stressed that the artisans copy the exact details that were included in the photograph. Even if the evidence of copying was unavailable, the district court's decision could be upheld in this case on the basis that defendant Koons' access to the copyrighted work was conceded, and the accused work was so substantially similar to the copyrighted work that reasonable jurors could not differ on this issue.

1. The Fair Use Doctrine

 Defendant Koons attempted to defend his use of Plaintiff's work under the doctrine of “fair use.”  The Court analyzed the four factors and disagreed.

• Purpose and Character of the Use 

The Court noted that Koons' action of tearing off the copyright notice of the photograph was relevant to this portion of the inquiry and suggested bad faith. The Court referenced the Supreme Court's holding in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449 (1984) that copies made for commercial or profit-making purposes are presumptively unfair. The Court noted that Koons' profited from the copy.

The Court also considered Koons' argument that the primary purpose of the use was for social commentary. Koons' argued that his sculpture was a satire or parody of society at large. The Court reasoned that while Koons' work was a parody of something, it was not a parody of the work it was copying, and therefore could not be considered fair use under the doctrine.

• Nature of the Copyrighted Work 

The Court held here that since “Puppies” was a creative and imaginative work of art by Rogers, who made his living as a photographer, and hoped to gain a financial return for his efforts with this photograph, this factor militated against a finding of fair use.

• Amount and Substantiality of the Work Used 

The Court notes that it is not fair use when more of the original is copied than is necessary. Koons' argued that since his work was a parody, then he should have significant leeway in terms of how much he could copy before it was considered too much for fair use. The Court held that Koons' copied the totality of Rogers' photograph, which was much more than would have been necessary even if the sculpture was a parody of the plaintiff's work.

• Effect of the Use on the Market Value of the Original

The Court noted that the defendants clearly planned to profit from their exploitation of “Puppies” without paying Rogers for their use of his photo. The Court said that there was nothing in the record to support the view that Koons produced “String of Puppies” for anything other than to sell as high-priced art. Therefore, the likelihood of future harm to Rogers' photograph was presumed.

DAMAGES/FEES:

Click here to watch our VIDEO on copyright damages. 

The Court also considered Rogers' claim for infringing profits in the amount of $367,000. The Court laid out evidence that the district court was allowed to consider when apportioning damages. The Court said that Rogers could demonstrate proof of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and elements of profit attributable to factors other than the copyrighted work. The copyright owner would also be allowed to elect to recover an award of statutory damages.

The Court does not grant Rogers the full amount of the reward he sought. The Court held that there were still factors left to be considered, including the deductible expenses and the amount of actual damages to Rogers and the proper apportionment of the profits between them were left to be determined on remand. 

CONCLUSION:

Here, the United States Court of Appeals for Second Circuit clarified that for a work to be deemed a fair use parody under the Copyright Act, it must be a parody of the work copied, not just a parody in general. The Court found that there were issues of fact and remanded to the lower court to determine damages. This case was later settled out of court.

This blog was written by Ms. Claudia Lin, U.S.C. law student.

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