Copyright, Creativity, and Transformative Use

Chapter 9
Copyright, Creativity, and Transformative Use

Kim Treiger-Bar-Am*


Creativity relies upon copying and changing prior works. Authors and artists are influenced by and respond to earlier elements of cultural heritage. Sir Isaac Newton claimed that if he had seen further, it was because he had stood on the shoulders of giants. As Justice Story wrote, in literature, art and science, nothing is truly new.1 Copies and changes abound.2 It may be said that all expression is at some level borrowed – or copied. Understanding creativity as based on copying does not require adopting a postmodernist view deconstructing the concept of authorship.3 Rather, all authors, including those whose authorship involves borrowing and indeed copying from others, should be allowed to develop their creativity.

The purpose of copyright is to foster creativity. As can be seen from the title of the UK Statute of Anne and the US Copyright Clause, copyright is designed for the ‘Encouragement of Learning’ and ‘the Progress of Science and useful Arts’. Yet despite copyright’s purpose, copyright law restricts the copies and changes necessary for creativity. The copyright-holder’s distribution right prevents the production of copies; the author’s moral right under copyright prevents changes to works; and the copyright-holder’s right to derivative works prevents copies with changes. Can copyright doctrine nevertheless protect the creativity of authors who copy and change the so-called ‘original’ works of the ‘primary’ authors they follow?

One method of allowing creativity is the provision of a defence to claims of copyright infringement where expression makes transformative use of prior expression. Within its fair use doctrine, US law provides a defence for transformative use. In recent analysis of US case law, the transformative use of a work has been called the central factor upon which courts rely in considerations of fair use.4 UK law has been said to recognise a fair use defence, and can be seen to include doctrinal developments supporting transformative use as well. This chapter explores courts’ analysis of the transformative use defence in particular in the context of appropriation art, defined as ‘the more or less direct taking over into a work of art a real object or even an existing work of art’.5

It is shown here that in their analyses of the transformative use defence, courts engage a hermeneutic analysis which is also used in free speech cases and in the art world. The hermeneutic method interprets works by examining the three elements of Author, Reader and Text. In each of the areas considered – copyright doctrine, free speech case law, and aesthetic theory – the focus has shifted towards the Reader. Given the focus on the Reader’s understanding of the meaning of the appropriation artist’s copies of and changes to previous artwork, the law is able to accept transformative use of works in copyright. Creativity may thus be protected.

The second section of this chapter sets out the legal understanding of transformative use in UK law, and the third section, in US law. The discussion in the fourth section turns to hermeneutic analysis, exploring the method of court consideration of free speech claims in the US. The fifth section returns to the transformative use defence under US law, where a similar hermeneutic court method is seen. It is put forward that with this method of analysis courts are able to accept transformativity in appropriation art. While copyright doctrine has increasingly restricted creativity, the hermeneutic method utilised by courts considering the transformative use defence may enable copyright law to further its goal of encouraging and promoting creativity.

UK Copyright Law

UK copyright law includes a ‘substantial part’ doctrine, which on some views allows transformative use. Moreover, UK copyright law allows a fair use defence, of which commentators have seen transformative use as an element. Finally, courts evaluating moral rights claims under copyright appear to utilise a judicial test termed here the minimal-maximal test, which allows the protection of transformative uses. Together, these three doctrines may allow copies and changes upon which creativity depends.

Substantial Part

The substantial part doctrine may be seen as protecting transformative use. UK copyright law restricts acts of copying to the ‘work as a whole or any substantial part of it’.6 Where the subsequent work does not retain a substantial part7 of the prior work, the secondary work is protected: as long as what has been taken from a prior work has been changed enough so that no ‘substantial part of the plaintiff’s work survives in the defendant’s work’, a defence will stand.8 Thus in effect, the law allows a change – or what may be termed a transformation – to the prior work.9 Sir Hugh Laddie called this use of the substantial part doctrine a ‘device’ for the protection of transformative use,10 suggesting that a court will find that no substantial part has been taken because of the alteration to the material, in order to protect transformative use.11 For instance, the law ‘smiles on’ parodies, which are given ‘latitude’.12

In Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., Lord Scott essentially acknowledged transformative use when he said that with altered copying, if ‘the alterations are sufficiently extensive it may be that the copying does not constitute an infringement at all’.13 Even where there is direct evidence of copying, ‘the differences between the original and the copy may be so extensive as to bar a finding of infringement’.14

Laddie recognised that a change of context can be transformative under copyright doctrine. Removing material from its context may effectively destroy its originality, so that no substantial part is taken.15 In borderline cases, it may make a difference how much further skill and labour the defendant bestowed on his own work so as to give it original character; it is a question of fact and degree.16

An alternative view was taken in Williamson Music Ltd. and Others v. The Pearson Partnership Ltd. and Schweppes Ltd. v. Wellingtons Ltd.17 There the courts found that if it takes a substantial part from the primary work, the secondary work’s originality does not excuse that work’s use of the primary work. It is said that the point is not how much is new, but how much was taken. Nevertheless, Laddie’s analysis arguably may still be maintained, supporting a transformative use defence.

While in his comments for the Hargreaves review Professor Lionel Bently called Laddie’s view ‘valiant’, and indicated the ‘restrictive interpretation of “substantiality”’ in developments in UK and EC law,18 he nevertheless suggested a provision that

would not focus on how much was taken, but what was added and whether there was, as a result of what was added, a transformation of what was taken.

In effect, compilations comprising small takings that are synthesised into a new work would be permissible.19

The Hargreaves Review of 2011, commissioned and endorsed by the UK government, suggested making fuller use of limitations and exceptions under EU law, in order to update copyright law in the digital age.20

Fair Use Defence

In addition to the substantial part doctrine, a fair use defence may allow transformative use under UK law. UK copyright law provides a defence for ‘fair dealing’, as set forth in Section 30 of the UK Copyright, Designs and Patents Act 1988 (‘the Act’, or ‘UK Act’). In addition to that statutory defence, courts are said to examine the ‘object and purpose’ of the use of a work, thus protecting the fair use of a copyright work.21 Laddie has put forward the analysis of UK case law that shows fair use considerations of copyright claims.22 While the development of a fair use exception in UK law is currently considered to be restricted given the EC Information Society Directive 2001/29/EC (‘European Directive’), the constraints on exceptions and limitations imposed by the Directive have been considered overestimated.23 Professor Bently commented that the UK review of limitations and exceptions is ‘[c]learly … interested in the development of a “fair use” exception … . My own view is that a real case can be made for the desirability of such a defence’.24

It is noteworthy that also in the European Directive the fairness of use is of concern. Criticism and review are listed among the permissible exceptions or limitations to rights of reproduction and communication, conditioned upon ‘fair practice’. According to the Directive, ‘quotations for purposes such as criticism or review’ may be permitted:

provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author’s name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose.25

I submit that in fact courts should expressly allow transformative use pursuant to a fair use defence. The law should allow as fair use the taking of a substantial portion of a copyright work, where it has been transformed.26

Moral Rights, and Meaning

Finally, it is submitted that the moral right can be understood to allow transformative use. The UK Act allows authors the moral right of integrity to prevent infringing modifications to works, labelled derogatory treatment.27 While the Act does not explicitly allow a fair use defence to moral rights,28 in considering claims of an infringement of the integrity right courts use a textual evaluation comparing the primary and modified works I term a minimal-maximal test, which can be seen as allowing transformative use.29 Where the allegedly infringing modifications are significant and constitute transformative use of the primary work, the claim of infringement of the moral right is not upheld.30

For example, the court protected maximal changes in Confetti Records v. Warner Music U.K. Ltd.31 Confetti Records involved the defendant’s modification of a music track transferred to it by the plaintiffs, on a compilation album. While the claim of infringement of the author’s integrity right failed in that the treatment was not held to be derogatory,32 the court described the process of mixing as one which results in a ‘new work’.33 The possibility appears to be put forward that the defendants’ work would have risen to this level.

UK courts considering moral rights claims have also recognised that multiple meanings can be given to a work, thus supporting the notion of a transformation of meaning. In Confetti Records, the court examined the meaning of the modification to a rap superimposed upon garage music. The court described it as a ‘faintly surreal experience of three gentlemen in horsehair wigs examining the meaning of such phrases as “mish mish man” ’,34 and wrote that meaning is not necessarily fixed and singular, but is open to different interpretations. Moreover, in Pasterfield v. Denham, the court cited an earlier decision in finding ‘the “one meaning rule” strange’, thus affirming the possibility of multiple meanings.35

Thus while UK law has not expressly recognised a transformative use defence, transformations may be allowed. The use of earlier works is sometimes permitted where the use is not of a substantial part of the earlier work; a fair use defence may be evolving; and moral rights claims are not upheld where the change to a work creates a new work. It is submitted that transformative use should be considered fair use, and termed as such directly.

US Copyright Law

The transformative use defence has been recognised by US courts more expressly than in the United Kingdom. This section begins by examining the transformative use defence, and then distinguishes it from the derivative rights doctrine. In the following section the transformative use defence is compared with certain elements of the US free speech doctrine.

Transformative Use under Copyright

In the US Supreme Court case Campbell v. Acuff-Rose, involving 2 Live Crew’s parody Pretty Woman of Roy Orbison’s song Oh, Pretty Woman,36 the Court evaluated the transformative use of the copyright work. The Court developed the transformative use defence, referring to a previous analysis by Judge Leval in an article in the Harvard Law Review,37 and by Justice Story in Folsom v. Marsh.38 In Campbell v. Acuff-Rose, the US Supreme Court wrote that:

… the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.39

The fair use test was developed by courts and then enacted as Section 107 of the US Copyright Act. In determining whether the use of a prior work constitutes fair use under copyright, it asks courts to look to four factors: 1) the character of the use; 2) the nature of the work; 3) the substantiality of the use; and 4) the market effect of the use.40 Transformative use is a main element of consideration as part of the first factor in the fair use test.41

In the Campbell case the Supreme Court wrote that an important aspect of the inquiry with regard to the first factor is whether the new work merely ‘supersedes’ 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; … in other words, whether and to what extent the new work is transformative’.42 The Court also noted that the degree of transformativity is relevant, underscoring that ‘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’.43

Various forms of transformative use have been recognised by the courts. The digitisation of copyright works has been upheld as transformative use in Authors Guild v. Google, as with the thumbnail sketches used in Kelly v. Arriba and in Perfect 10.44 Digitisation was also at issue in the use of Grateful Dead photos for historical rather than artistic purposes in Graham Archives.45 Parodies after Campbell which discussed transformative use include the use of Leibovitz’s photo of Demi Moore by Paramount Pictures for a film promotion with Leslie Nielsen;46 use of Barbie images by the artist Tom Forsythe;47 and the ‘Wind Done Gone’ parody of ‘Gone with the Wind’.48 Judge Leval described transformative use as the creation of ‘new information, new aesthetics, new insights and understandings’, and gave these further examples of transformative uses: ‘Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses’.49

Derivative Works

While pursuant to the US statute a transformed work is a derivative work over which the copyright owner of the original work has exclusive rights, it is, rather, for transformative use that a defence holds to claims of copyright infringement. Significant aspects of the defence may be seen from highlighting the distinction between the derivative rights doctrine and the transformative use defence.

A ‘derivative work’, over which a copyright owner has exclusive control, is defined as ‘a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted’.50

A distinction between content and use is to be noted. While the exclusive derivative right of a copyright owner goes to the work’s content, the defendant may raise a defence with regard to her use of the earlier work. The derivative rights doctrine prohibits the making of a ‘transformed’ work, i.e., a transformation of the content of a work; nevertheless, the prior work may be used in a way which lends it a new expression, meaning or message.51 In the case of Castle Rock discussed further below, where a trivia quiz book regarding the fictional television series Seinfeld was found substantially similar to the original, the court indeed noted the ‘potential source of confusion’ as to the difference between transformative uses and derivative works.52

Commentator Kerry Blasingim writes that it is hard for the art world to come to grips with appropriation art cases since in the usual sense of the word ‘transform’, the appropriation artist certainly may be said to transform the prior work. In common usage, ‘transformative’ means a change in composition or structure. Yet as Blasingim notes, the legal definition of ‘transformative use’ is very different.53

Akin to the alternative senses which the terms ‘transform’ and ‘derive’ take on, also the term ‘appropriation’ takes on alternative meanings in copyright law. The latter term is used at times to represent an infringing taking, and at times to indicate an acceptable level of taking. In the Campbell case, the Supreme Court referred to appropriation both as an example of infringing copying54 and as legitimate, as with parody: ‘[t]he fact that parody can claim legitimacy for some appropriation does not, of course, tell either parodist or judge much about where to draw the line’.55

Where is the line to be drawn between infringing copying and legitimate transformative use, in the context of appropriation art? The heart of the test is the evaluation of whether the use alters the original work with new ‘expression, meaning, or message’. Before these elements of the test are explored more fully below, the analysis of similar aspects in the related doctrine of free speech is examined.

Free Speech Doctrine

This section explores similarities between the doctrines of free speech and copyright. It is then seen that the judicial method in free speech cases may be termed a hermeneutic analysis, where the elements of Author, Text and Reader are examined. In the following section, it is seen that these same three hermeneutic elements are apparent in courts’ analyses of works pursuant to the transformative use defence.

The Two Doctrines Compared

In the US Constitution, the protection of speech under the First Amendment and the protection of an author’s literary interests under the Copyright Clause (Clause 8) were adopted together, and research has shown that they arose out of similar concerns of the Founders. That copyright and freedom of expression are in tandem may be seen from the historical roots of the two.56 Jane Ginsburg has written of the accord between the two constitutional provisions.57 In Harper v. Row the US Supreme Court noted the confluence between the two concepts, when it termed copyright ‘the engine of the free expression’.58 Pamela Samuelson has argued that also in the UK this phenomenon can be seen: the UK Statute of Anne redirected copyright’s purpose from censorship towards freedom of expression.59 In addition to their historical conjunction and purpose, similarities of methodology between the free speech and copyright doctrines may be seen.

Upon both doctrines courts sometimes evaluate the expressiveness of the speech or work at issue. In copyright law the US Supreme Court has ruled that a ‘minimal degree of creativity’ is necessary for a work to be considered original and protected under copyright.60 Similarly, in free speech cases the Court has evaluated whether a minimal degree of expressiveness is present, in determining whether the speech will be protected. For example in Barnes v. Glen Theater Inc., the Court questioned whether nude dancing had an element of expressiveness. In that case the Court wrote that there is a ‘kernel of expression’ in almost every human activity, but that such a kernel is insufficient.61 In concurrence Justice Souter wrote that ‘every voluntary act implies some such idea, and the implication is thus so common and minimal that calling all voluntary activity expressive would reduce the concept of expression to the point of the meaningless’.62 Given that nude dancing was found to be expressive conduct ‘only marginally’, the Court upheld the state ban.63 Both doctrines thus look to creativity, or expressiveness.

The doctrines are further alike in not protecting ideas, but rather expression. In copyright doctrine ideas and expression are distinguished, and only expression is protected, as was determined by US case law as early as 1879, in Baker v. Selden.64 Also in the landmark free speech case of U.S. v. O’Brien wherein the US Supreme Court established a test for regulation of symbolic speech, the Court rejected ‘the view that an apparently limitless variety of conduct can be labeled “speech” whenever the person engaging in the conduct intends thereby to express an idea’.65

Transformation is also seen to be relevant in both doctrines. Ronald Bezanson has written that ‘by importing transformation so heavily into fair use, the Court imported the First Amendment into copyright law’.66 Mark Tushnet has considered both doctrines alongside each other, recalling the transformativity of meaning.67 Bezanson too considers the transformation of meaning in both doctrines: ‘With art and aesthetic speech, the First Amendment concerns seem to turn on ideas of transformation and new meaning drawn from what otherwise would be a mere representation’, and in copyright cases such as Campbell v. Acuff-Rose, the Court’s ‘job … was to find new meaning, transformation beyond the original, representation to something else in the minds or senses of the audience’.68

While the transformation of a work’s meaning under copyright is further discussed below, examples are brought here from free speech case law, such as with the analysis of symbolic speech. In Texas v. Johnson the Supreme Court considered whether the meaning of the American flag, a symbol with a variety of meanings, may be altered.69 A more recent example is the 2010 case of Kleinman v. City of San Marcos in the Fifth Circuit, involving the question of whether a painted wrecked vehicle was an expressive work of art: ‘Wade sought to transform … the vehicle into “something that’s more respectful of the planet …”’.70

Hermeneutic Analysis in Free Speech Cases

Also common to the free speech and copyright doctrines is the use of hermeneutic analysis. Courts examine three elements of speech or a work, in order to explore its meaning. One element looks to what is shown by the Text itself, as distinguished from the work (oeuvre). A second element asks what the Author intended to communicate through the work. The third element relies on the understanding of the work by its Readers, namely the audience viewing or hearing a work. These three elements may be labelled Text, Author, and Reader – or if the order is changed, the elements can be referred to under the abbreviation ART.

The analysis of all three elements in US free speech case law includes case discussion of the determination of when speech is present, namely defining the conditions of speech. In Clark v. Community for Nonviolence, the Supreme Court wrote: ‘a message may be delivered by conduct that is intended to be communicative and that, in context, would reasonably be understood by the viewer to be communicative’.71 Charles Collier calls this reliance on the three hermeneutic elements a ‘triadic relation among a speaker’s intention to communicate a relatively specific message, and an audience’s potential understanding of that message’.72 Bezanson describes it as follows: ‘Free speech has historically been premised on a linear process beginning with a speaker who intends to express a message, which message is in turn understood by an audience’.73

Hermeneutic analysis for the determination of the meaning of a work has developed from its early concentration on the author’s intent. While in the past an author’s biography was studied in order to gain a deeper understanding of his intent and therefore the meaning of his work,74 in more modern times hermeneutics tends to focus on the third element, in what has been called the Reader-reception theory. Michel Foucault and Roland Barthes are early thinkers who put this view forward, and many have followed in their paths.75 The intention view of art has met with criticism, as it is said that the intention view misfits the very nature and value of art, which goes not to the liberty of the artist but to the liberty of the audience engaged in its own ascription of meaning.76

First Amendment doctrine follows this shift in focus, from the Author’s intention to the Reader’s understanding. While the intention view has a ‘well-grounded pedigree in First Amendment theory’, with both art and speech viewed as an individual act of liberty arising from the intention of the artist or speaker,77

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