Copyright Fair Use: A Comment on the Parody Defense

osters, rap songs, television programs, movies

and novels are all examples of works in which

their authors used copyrighted material without

permission and, when challenged, claimed

their works were protected by the “fair use”

doctrine. With increasing frequency, the success or failure

of this defense depends on whether the challenged work

“parodies” the pre-existing work. Because the criteria

used to answer this question are subject to interpretation

by the fact-ﬁnder—e.g., does the new work “comment

on” or “transform” the work being parodied?—in order to

provide ﬂexibility in balancing the competing interests of

the First Amendment and the copyright owner’s ability

to control his work, the parody fair use defense provides

fertile ground for creative lawyering.

This article examines how courts have analyzed

whether an asserted parody qualiﬁes for fair use protection

in the leading Supreme Court case of Campbell v. Acuff-

Ross Music Inc.

and its progeny, including the recently

issued, currently on appeal, decision from the Southern

District of New York in Salinger v. Colting,

in which the

parody fair use defense was rejected at the preliminary

injunction stage.

The 1976 Copyright Act (17 U.S.C. §107)

codiﬁed the previously existing common law fair use

afﬁrmative defense into a four-factor test that provides

for consideration of (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. Although none of these factors, nor

the preamble to §107, mentions “parody,” ever since

the Supreme Court’s 1994 decision in Campbell, the

parody fair use defense has been a popular refuge when

an unlicensed use of a copyrighted work is challenged.

Although the Supreme Court in Campbell addressed

all four of §107’s fair use factors, this article focuses on

the ﬁrst factor because, in practice, resolution of the

ﬁrst factor has generally been given prominent weight

in determining the success or failure of the parody fair

use defense.

The plaintiff in Campbell, the copyright owner of the

Roy Orbison song “Oh Pretty Woman,” contended that

the musical group 2 Live Crew’s unlicensed parody song,

“Pretty Woman,” constituted copyright infringement.

Under its ﬁrst factor analysis, the Supreme Court ruled

that the new work must “comment on” and, preferably,

“transform” the original author’s work in order to qualify

as a parody protected by the fair use defense.

The Court further ruled that the fairness of the use

of an unlicensed work “diminishes” if the “commentary

has no critical bearing on the substance or style of the

original composition, which the alleged infringer merely

uses to get attention or to avoid the drudgery in working

up something fresh.” In holding that the 2 Live Crew

song was a protected parody, the Court ruled that its

lyrics “can be taken as a comment on the naiveté of

the original…[and] as a rejection of its sentiment that

ignores the ugliness of street life and the debasement

that it signiﬁes.” The Supreme Court found that the

new song did not merely “supersede” the original work,

but rather commented on it and transformed it into

something with a different purpose or character that

provided “new expression, meaning or message.”

High-Proﬁle Cases

The Supreme Court’s emphasis on whether the new

work transforms and comments on the original has been

employed in multiple high-proﬁle parody fair use cases

since Campbell. However, while the courts in these cases

have applied the same analytic framework, the results

are not always easy to reconcile. In Suntrust Bank v.

Houghton Mifﬂin Co.

and Leibovitz v. Paramount Pictures

Corp.,

the courts ruled that the works in question were

legitimate, fair use protected parodies. In Dr. Seuss

Enterprises, L.P. v. Penguin Books USA Inc.

and Salinger

v. Colting, supra, the courts found that the works in

question were not.

In Dr. Seuss, the allegedly infringing work was an

illustrated book about O.J. Simpson’s double murder

trial titled “The Cat Not in the Hat! A Parody by Dr.

Juice.” In addition to the similarities in the title and use

of the image of Dr. Seuss’ “Cat in the Hat” character,

defendants’ book employed Dr. Seuss’ familiar poetic

meter and language. The copyright owner of the Dr.

Seuss works asserted copyright and trademark claims

and sought to preliminarily enjoin the unlicensed

exploitation of “The Cat Not in the Hat!”

Defendants argued that there was no copyright

infringement because the challenged book was a fair

use parody. Recognizing that the parody had to comment

on Dr. Seuss’ works in order to be protected, defendants

argued, in part, that their work did this by evoking the

world of “The Cat in the Hat” in order to comment

on “the mix of frivolousness and moral gravity that

characterized the culture’s reaction” to the double

murders. The U.S. Court of Appeals for the Ninth

Circuit disagreed, labeling the argument a “post hoc

characterization.” While ﬁnding that defendants’ work

“broadly mimic[ked] Dr. Seuss’ characteristic style,” the

Court ruled that it did not hold the style up to ridicule

or otherwise comment on it. To the contrary, “The Cat

Not in the Hat!” simply used Dr. Seuss’ copyrighted

material in its retelling of the Simpson murder highlights

to “get attention” and “avoid the drudgery in working

up something fresh.”

Less than a year later, in Leibovitz v. Paramount

Pictures Corp., the U.S. Court of Appeals for the Second

Circuit issued its ﬁrst signiﬁcant post-Campbell parody

fair use decision. The plaintiff, Annie Leibovitz, a well

known photographer of celebrities, claimed that a poster

advertising the movie “Naked Gun 33⅓” infringed her

seven-months-pregnant Demi Moore that appeared

on the cover of Vanity Fair magazine. In the ad, the

defendants superimposed the face of the movie’s star,

Leslie Nielsen, onto a photograph of a pregnant woman’s

body that was designed to replicate identically Ms.

Leibovitz’s photograph of Ms. Moore.

The Second Circuit held that the advertisement

was transformative because of the stark contrast

between the serious Demi Moore and the smirking

Leslie Nielsen, replete with a pregnant stomach. After

acknowledging that it was a closer question as to whether

the advertisement commented on the original, the

court ruled that the ad could reasonably be perceived

Volume 242—No. 74

thursday, october 15 2009

On the Parody Defense

Outside Counsel

Expert Analysis

alaN r. FriedmaN, a partner at Katten Muchin Rosenman,

frequently counsels media and entertainment industry

companies about copyright and trademark matters.

adam s. Gross, a 2009 summer associate at the firm,

assisted in the preparation of this article.

www. NYLJ.com

Alan R.

Friedman

While the courts in multiple high-

proﬁle parody fair use cases since

‘Campbell’ have applied the same

analytic framework, the results are

not always easy to reconcile.

as commenting, through ridicule, on the “seriousness,

even the pretentiousness, of the original,” and, therefore,

did constitute fair use.

The different outcomes in the Leibovitz and Dr.

Seuss cases illustrate the potential unpredictability of

the parody fair use defense. One can certainly imagine

the Ninth Circuit panel that decided Dr. Seuss rejecting

the fair use rationale offered in Leibovitz. Just as the use

of Dr. Seuss’ copyrighted work was viewed as mimicry

lacking in critical commentary, so, too, could Paramount’s

use of a famous, controversial photograph for its “Naked

Gun 33⅓” advertisement be seen as simply using Ms.

Leibovitz’s copyrighted work in order to “get attention”

for the movie while “avoid[ing] the drudgery of working

up something fresh.” As for the Second Circuit’s ﬁnding

that the poster commented on the photo’s self-important

seriousness, again, it is easy to imagine the Dr. Seuss

panel viewing this justiﬁcation as merely an after-the-

fact rationale for the unlicensed use of the copyrighted

photograph.

Challenges Over Novels

Contrasting rulings were also issued in two more

recently decided cases in which Campbell’s parody

fair use analysis was applied to determine whether the

challenged works—in each, a full-length novel that drew

heavily on a hugely popular copyrighted novel and its

characters—constituted copyright infringement. In a

decision issued in 2001 that surprised many, the U.S.

Court of Appeals for the Eleventh Circuit, in Suntrust

Bank v. Houghton Mifﬂin Co.,

found the challenged

work protected under the fair use doctrine.

The plaintiff in Suntrust, the owner of the copyright

for the best-selling novel “Gone With the Wind”

(“GWTW”), sued for copyright infringement and moved

to preliminarily enjoin exploitation of a book titled “The

Wind Done Gone” (“TWDG”), which the defendants

described as “an inversion” of GWTW in which many

of GWTW’s story lines are told from the perspective

of the slaves. Both the District Court and the Eleventh

Circuit agreed that the ﬁrst half of TWDG was “largely an

encapsulation of [GWTW]” that incorporated GWTW’s

copyrighted characters, story lines and settings.

Despite ﬁnding that TWDG made “substantial use” of

GWTW, the Eleventh Circuit vacated the preliminary

injunction entered by the District Court, ruling that

such use was “fair” because TWDG was “principally

and purposefully a critical statement that seeks to rebut

and destroy the perspective, judgments, and mythology

of GWTW.” For example, the Eleventh Circuit found

that TWDG eliminated the romanticism of the slavery

depicted in GWTW and reversed GWTW’s race roles,

portraying whites as stupid or feckless and instilling in

nearly every black character redeeming qualities not

found in GWTW. In supporting its fair use ruling, the

Eleventh Circuit stated that it “was hard to imagine how

[the author] could have speciﬁcally criticized GWTW

without depending heavily upon copyrighted elements

of that book.”

Eight years after the Suntrust decision, in Salinger v.

Colting, Judge Deborah A. Batts of the Southern District

of New York was faced with a copyright infringement

claim in which the renowned author, J.D. Salinger,

sought to preliminarily enjoin exploitation of an

unlicensed novel that drew heavily on his classic novel,

“The Catcher in the Rye.” Fredrik Colting wrote the

challenged book, “60 Years Later: Coming Through the

Rye,” under the pseudonym John David California. Mr.

Colting admitted that his book’s main character, “Mr.

C.,” was a 60-year-older version of Holden Caulﬁeld, the

famous protagonist of Mr. Salinger’s novel. While the

defendant did not deny that his book was a continuation

of Mr. Salinger’s novel—indeed it was marketed as a

“sequel” in the United Kingdom and referenced many

experiences that Mr. Salinger created for Caulﬁeld in

The Catcher in the Rye—Mr. Colting claimed that “60

Years” was a protected parody.

In support of his parody fair use position, Mr. Colting

contended that “60 Years” commented on “The Catcher

in the Rye,” on Holden Caulﬁed, and on J.D. Salinger

himself. The court was not persuaded. It cited Mr.

Colting’s pre-lawsuit statements and marketing materials

as evidence that “60 Years” was intended as a sequel

and Mr. C. as merely a 60-years-older Holden Caulﬁeld

having the same character traits and making the same

kinds of observations as Caulﬁeld made in “The Catcher

in the Rye.”

Unlike in Suntrust, where the Eleventh Circuit found

that TWDG was “principally and purposefully a critical

statement,” Judge Batts ruled that “60 Years” “contains

no reasonably discernable rejoinder or speciﬁc criticism

of any character or theme of [The Catcher in the Rye].”

The court found that Mr. Colting simply reiterated the

characteristics of Holden that were thoroughly depicted

in Mr. Salinger’s novel, including the contrast between

Caulﬁeld’s critical and rebellious nature and his tendency

toward depressive alienation—concluding that “it is

hardly parodic to repeat that same exercise in contrast,

just because society and the characters have aged.”

The court was equally dismissive of defendants’

contention that “60 Years” was a protected parody

because it commented on Mr. Salinger (who was

included as a character in defendants’ book). Because

Campbell requires that a protected parody comment

upon the copyrighted work that is the subject of the

parody, the court found that commentary about Mr.

Salinger was not commentary on either “The Catcher in

the Rye” or Holden Caulﬁeld and, thus, could not be a

protected parody.

Judge Batts’ rejection of the parody fair use defense

in Salinger is noteworthy because barely three months

earlier, in Bourne Co. v. Twentieth Century Fox Film

Corp.,

she sustained such a defense and granted the

summary judgment dismissal of a music copyright

infringement claim. Bourne is the copyright owner

of the popular song “When You Wish Upon a Star,”

which The Walt Disney Company has used in

television programming, television advertisements,

its “Pinocchio” motion picture and its amusement

parks. Bourne challenged defendants’ inclusion of a

song titled “I Need a Jew” in an episode of the television

show “Family Guy” titled “When You Wish Upon a

Weinstein.” “Family Guy,” as described by the court,

“frequently contains irreverent, iconoclastic plotlines

and pop-cultural references.” In the episode, one of the

main characters “wishes upon a Weinstein” because

he thinks he will be richer if a Jewish man takes care

of his money.

Judge Batts held that the song parodied “When

You Wish Upon a Star” and was entitled to “fair use”

protection. By pairing the “Family Guy” character’s

bigoted stereotypes of Jewish people with “When You

Wish Upon a Star’s” fairy tale world view, the court

found that “I Need a Jew” commented on the original

song’s fantasy that wishing upon a star can make one’s

dreams come true, while also making the point that

“any categorical view of a race of people is childish and

simplistic, just like wishing upon a star.”

Judge Batts supported her parody ruling by crediting

defendants’ evidence that “I Need a Jew” was also

intended to comment on the “widespread belief” that

Walt Disney was anti-Semitic, even though “When

You Wish Upon a Star” did not concern Walt Disney

personally. Notably, this ruling contrasts with the ruling

in Salinger that Mr. Colting’s claim that “60 Years”

commented on J.D. Salinger personally did not support

his parody defense because commenting on Mr. Salinger

was not the same as commenting on “The Catcher in

the Rye.”

The ruling in Salinger provides some reassurance

to copyright owners that more than an after-the-fact

rationale as to how the putative parody transforms

and comments on the original is required and that the

proffered parody will be subject to scrutiny. However, just

as the criteria for determining when a parody qualiﬁes as

fair use are imprecise, the rigor with which the proffered

parody is to be scrutinized is not subject to an established

standard. As a result, the outcome in these cases appears

to depend heavily on how great the deference (or strict

the scrutiny) the judge hearing the case applies when

evaluating whether the proffered parody qualiﬁes as a

“fair use” under Campbell.

The good news for copyright owners, is that Suntrust,

at least so far,

did not begin a “trend.” If Salinger had,

like the Suntrust decision, found the use in “60 Years”

to be “fair,” novelists, screenwriters, movie producers

and others might be tempted to devote their energy

to ﬁguring out how to incorporate established brand-

named characters such as Harry Potter, James Bond and

such animated icons as Shrek into their stories and to

concocting parody rationales to support such use.

•••••••••••••

•

•••••••••••••

Campbell v. Acuff-Rose Music Inc.

, 510 U.S. 569 (1994).

Salinger v. Colting

, 2009 WL 1916354 (SDNY July 1, 2009),

appeal argued, No. 09-2878 (2d Cir. Sept. 3, 2009).

3. 268 F.3d 1257 (11th Cir. 2001).

4.137 F.3d 109 (2d Cir. 1998).

5. 109 F.3d 1394 (9th Cir. 1997).

6. 268 F.3d 1257 (11th Cir. 2001).

7. 602 F.Supp.2d (S.D.N.Y. 2009).

8. Additional differences in the facts presented in

Salinger

and

Bourne Co.

may help explain their different outcomes. In contrast to

the pre-lawsuit statements and marketing materials in

Salinger

that

the court found to undercut the credibility of Mr. Colting’s parody

argument, in

Bourne Co.

, Judge Batts supported her fair use ruling by

citing evidence demonstrating that defendants had intended from the

outset to parody “When You Wish Upon a Star.”

9. The ﬁnal word in

Salinger

has not been written. Mr. Colting ﬁled

an expedited appeal, which was argued Sept. 3, 2009. Much of the

argument concerned whether a preliminary injunction should have

issued even assuming that a likelihood of infringement was established.

While past precedent has supported presuming irreparable harm

and issuing a preliminary injunction when a likelihood of copyright

infringement is established, the Second Circuit appeared to take very

seriously arguments challenging the application of that precedent

on the grounds that (i) Mr. Colting’s alleged infringement was not

“simple piracy,” and (ii) in

eBay Inc. v. MercExchange

, 547 U.S. 388

(2006), the Supreme Court raised questions regarding the viability of

issuing an injunction in a copyright infringement lawsuit based on a

presumption of irreparable harm.

thursday, october 15 2009

Judge Batts’ rejection of the parody fair

use defense in ‘Salinger’ is noteworthy

because barely three months earlier,

in ‘Bourne Co. v. Twentieth Century

Fox Film Corp.,’ she sustained such a

defense and granted the summary

judgment dismissal of a music copyright

infringement claim.

Reprinted with permission from the October 15, 2009 edition

permission is prohibited. For information, contact 877-257-3382

or [email protected]. # 070-10-09-30