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Bill Graham Archives v. Dorling Kindersley Ltd.


    Citation. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 2006 U.S. App. LEXIS 11593, 78 U.S.P.Q.2D (BNA) 1764, Copy. L. Rep. (CCH) P29,179, 34 Media L. Rep. 1782 (2d Cir. N.Y. May 9, 2006)

    Brief Fact Summary. Bill Graham Archives, LLC (Plaintiff) owned the copyright in images on Grateful Dead event posters and tickets, and contended that Dorling Kindersley Ltd. (Defendant) infringed its copyright by publishing seven of the images in reduced size in a book on the history of the Grateful Dead.

    Synopsis of Rule of Law. Under the copyright law, a book publisher’s appropriation of copyrighted poster and ticket images in a biographical book in reduced-size format is a protected “fair use,” where the balance of the statutory fair use factors favors the publisher.

     

    Facts.Bill Graham Archives, LLC (BGA) (Plaintiff) owned the copyright in seven Grateful Dead (a rock band) event posters and ticket images that Dorling Kindersley Ltd. (DK) (Defendant), in collaboration with Grateful Dead Productions, sought to reprint in reduced-size in a book titled Grateful Dead: The Illustrated Trip (Illustrated Trip), which was intended as a cultural history of the band. Illustrated Trip contains over 2000 images representing dates in the history of Grateful Dead in chronological order along with a time-line and explanatory text. A typical page of the book features a collage of images, text, and graphic art designed to simultaneously capture the eye and inform the reader. Defendant initially sought permission from Plaintiff to reprint the images, but, after failing to do so, published the book with the images without a license or grant of permission. The images are displayed in significantly reduced form and are accompanied by captions describing the concerts they represent. When Defendant refused to meet Plaintiff’s post-publication license fee demands, Plaintiff filed suit for copyright infringement. The district court dismissed the action on summary judgment, and the court of appeals granted review.

     

    Issue.Under the copyright law, is a book publisher’s appropriation of copyrighted poster and ticket images in a biographical book in reduced-size format a protected “fair use,” where the balance of the statutory fair use factors favors the publisher?

     

    Held. (Restani, J.) Yes. Under the copyright law, a book publisher’s appropriation of copyrighted poster and ticket images in a biographical book in reduced-size format is a protected “fair use,” where the balance of the statutory fair use factors favors the publisher. Under 17 U.S.C. § 107(1), the first factor is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” Most important is whether the nature of the work is “transformative,” that is, “whether the new work merely supersede[s] 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.” BGA (Plaintiff) argues that as a matter of law merely placing poster images along a timeline is not a transformative use, contrary to the district court’s finding. Plaintiff’s argument must be rejected because here, Illustrated Trip is a biographical work documenting and commemorating the band’s 30-year history, and courts have frequently afforded fair use protection to the use of copyrighted material in biographies, recognizing such works as forms of historic scholarship, criticism, and comment that require incorporation of original source material for optimum treatment of their subject. Moreover, DK’s (Defendant) purpose in using the images at issue is obviously different from the original purpose they were created for. Originally, the images fulfilled the dual purposes of artistic expression and promotion, as the posters were distributed to generate public interest in the Grateful Dead and to convey information to a large number of people regarding the upcoming concerts. In contrast, Defendant used each of Plaintiff’s images as historical artifacts to document and represent the actual occurrence of Grateful Dead concerts featured on Illustrated Trip’s timeline. The images, in some instances, help the reader’s understanding of the biographical text by marking important concerts. Basically, Defendant’s use of the disputed images is transformative both when accompanied by commentary and when used on its own. This conclusion is made stronger by the manner in which they significantly reduce the size of the reproductions, which allows readers to recognize the historical significance of the posters, but is not adequate to offer more than a glimpse of their expressive value. The expressive value of the original images was additionally minimized by combining them with a timeline, textual material, and original graphical artwork to create a collage that makes sure all images at issue are employed only to enrich the presentation of the cultural history of the Grateful Dead, not to exploit copyrighted artwork for commercial gain. Yet another factor that supports the conclusion that the use was transformative is that the images make up an inconsequential (less than one-fifth of one percent) portion of the book. Also, no Plaintiff image takes up more than one-eighth of a page in a book or is given more prominence than any other image on the page. Lastly, the commercial nature of the use also supports a finding that the use was transformative, since the book does not exploit the use of BGA’s (Plaintiff) images as such for commercial gain, i.e., they are not used in commercial advertising or in any other way to promote the sale of the book. Their use is only incidental to the commercial biographical value of the book. The first factor weighs in favor of Defendant. The second fair use factor, under 17 U.S.C. § 107(2), is “the nature of the copyrighted work.” In assessing this factor, the court considers “the protection of the reasonable expectations of one who engages in the kinds of creation/authorship that the copyright seeks to encourage.” In this case, the images are creative artworks, which traditionally are the core of intended copyright protection. The district court found this factor weighed in favor of Plaintiff, but limited the eight it gave to it because the posters were published extensively. The district court was correct that creative works of art are the kind of works that weigh in favor of the copyright holder. However, the second fair use factor may be of limited usefulness where the creative work of art is being used for a transformative purpose, as here, where the images were used for their historical, rather than creative qualities. The third fair use factor, under 17 U.S.C. § 107(3), is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” Although each image was reproduced in its entirety, courts have held that such copying does not necessarily weigh against fair use because copying the entirety of a work is sometimes necessary to make a fair use of the image. Because this reasoning is sound, the third-factor inquiry must take into account that “the extent of permissible copying varies with the purpose and character of the use.” Applying this reasoning in the present case, even though the copyrighted images are copied in their entirety, the visual impact of their artistic expression is limited significantly due to their reduced size. Therefore, such use by DK (Defendant) was crafted to further its transformative purpose by making sure the reader’s recognition of the images as historical artifacts of Grateful Dead concert events. Accordingly, the third fair use factor does not weigh against fair use. Lastly, the fourth fair use factor, under 17 U.S.C. § 107(4), is “the effect of the use upon the potential market for or value of the copyrighted work.” Here, it is undisputed that Defendant’s use of the images did not impact Plaintiff’s primary market for the sale of the poster images. Instead, the inquiry is whether DK’s use impacted Plaintiff’s potential to develop a derivative market—in this case, the market for licensing Plaintiff’s images for use in books. Although Plaintiff lost royalty revenues from Defendant, and there is no question that, as a general matter, a copyright holder is entitled to demand a royalty for licensing others to use its copyrighted work, and that the impact on potential licensing revenues is a proper subject for consideration in assessing the fourth factor, if the secondary user’s failure to pay royalties was automatically held to constitute market harm, the fourth fair use factor would always favor the copyright holder. By definition, every fair use involves some loss of royalty revenue because the secondary user has not paid royalties. It cannot be said, therefore, that Plaintiff suffered market harm just because Defendant did not get and pay for a license to use the images. Instead, the inquiry focuses on the impact on potential licensing revenues for “traditional, reasonable, or likely to be developed markets.” Even though Defendant paid other copyright owners to reproduce their copyrighted works, and even though Plaintiff licensed its images to others and was willing to license images to Defendant (however for a fee that was not acceptable to Defendant), neither of these arguments demonstrates impairment to a traditional, as opposed to a transformative market. The market at issue is the transformative one of using the images for their historical significance, and because copyright owners may not preempt exploitation of transformative, fair use, markets, BGA (Plaintiff) did not suffer market harm because of lost license fees. The balance of the fair use factors weighs in DK’s (Defendant) favor, so its use was a fair use and did not infringe Plaintiff’s copyrights. Affirmed.

     

    Discussion. The fair use doctrine was first codified in the Copyright Act of 1976, which describes the four non-exclusive factors that must be considered in determining fair use. However, the ultimate test of fair use has been said to be 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. Therefore, by concluding that their fair use factors favored DK’s (Defendant) use is basically a conclusion that progress of the arts was better served by allowing such use.


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