Transformation' Of Fair Use Back To Its Section 107 Roots

The U.S. Court of Appeals for the Seventh Circuit recently put the brakes on more than two decades of widespread judicial application of the "transformative use" test in assessing a fair use defense to infringement under §107 of the Copyright Act.1 In Kienitz v. Sconnie Nation,2 the court expressly rejected the concept of transformative use and, in particular, the Second Circuit Court of Appeal's heavy reliance on that doctrine in Cariou v. Prince.3 This clash was perhaps inevitable, seeing that "transformative use" theory has been described as "a often highly contentious topic."4 But some history is needed to understand the tension between the Seventh and Second Circuits, as well as various other circuit courts that have embraced transformative use doctrine.

Origins

The concept of "transformative use" dates back to a seminal 1990 Harvard Law Review commentary entitled "Toward a Fair Use Standard"5 by current Second Circuit Judge Pierre N. Leval, who laid out a proposed analytical approach to assessing fair use. Frustrated by the absence of specific guidance from Congress when it enacted §107, and a lack of consistency and agreement among judges in their respective approaches to fair use, Leval postured that while no simple definition of fair use can be fashioned ... recognition of the function of fair use as integral to copyright's objectives leads to a coherent and useful set of principles. Briefly stated, the use must be of a character that serves the copyright objective of stimulating productive thought and public instruction without excessively diminishing the incentives for creativity. One must assess each of the issues that arise in considering a fair use defense in the light of the governing purpose of copyright law. Leval emphasized that the focus of the first §107 factor"the purpose and character of the use"must be on "the question of justification," that is, whether the use fulfills copyright law's objective "to stimulate creativity for public illumination."6 A court must, however, also examine "how powerful, or persuasive, is the justification" and weigh the strength of the justification "against factors favoring the copyright owner."7 Leval proposed that the type of "justification" supporting fair use "turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original."8 Merely superseding the object of the original protected work, such as repackaging or republishing it, however, "is unlikely to pass the test."9 But where a "secondary use adds value to the originalif the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings," Leval viewed this as "the very type of activity that the fair use doctrine intends to protect for the enrichment of society ... ."; nevertheless, he cautioned that transformative uses under the first §107 factor are "weakened to the extent that [the] takings exceed the asserted justification."10 In giving examples of lawful "transformative" uses, Leval cited criticism, "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," as well as "parody, symbolism, aesthetic declarations, and innumerable other uses."11 The potential to exceed an "asserted justification" manifests itself in the creation of derivative works, which is one of the exclusive rights reserved to a copyright owner under §106 of the Copyright Act. Leval emphasized that merely having a transformative objective does not guaranty success in claiming fair use because the transformative justification "must overcome factors favoring the copyright owner"i.e., the other three statutory fair use factors. Thus, one who creates a derivative work "may claim absolute entitlement because of the transformation," but "excessive takings may impinge on creative incentives," and a secondary user's claim under the first fair use factor is weakened "to the extent that her takings exceed the asserted justification."12 Notably, the only place in the Copyright Act in which the word "transform" appears is in its definition of a derivative work as "a work based upon one or more preexisting works, such as ... art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a 'derivative work'."13 While the exclusive right to create derivative works is reserved to the copyright owner and such works may "transform" the original, some unauthorized derivative works may...