Scream Icon in Green Day Concert Backdrop is Fair Use: Ninth Circuit

Practical Law Legal Update 8-537-2005 (Approx. 4 pages)

Scream Icon in Green Day Concert Backdrop is Fair Use: Ninth Circuit

by Practical Law Intellectual Property & Technology

Background

In 2003, artist and illustrator Derek Seltzer created Scream Icon, a drawing of a screaming, contorted face. He made posters, adhesive-backed prints and other copies of Scream Icon, which he has sold and given away and many of which have been plastered on walls as street art. In 2008, photographer and video designer Roger Staub photographed a brick wall covered in graffiti and posters, including a weathered, slightly defaced and torn Scream Icon poster. Green Day is a rock band.

Staub was engaged to create video backdrops for Green Day's 2009-10 concert tour. Staub created a different video backdrop for each of 32 songs. The backdrop at issue in this case is a four-minute video showing a time lapse screening of a brick alleyway covered in graffiti. The video spans several days, during which graffiti artists come and go, adding new art, posters and tags. A persistent feature of the video is a center frame dominated by an unchanging but modified image of Scream Icon, which Staub cropped out of his photograph and modified by, among other things, adding a large spray-painted cross and black streaks, and changing the color and contrast. Staub testified that he created this video to depict what he believed was the theme of the song: hypocrisy of religious people who preach one thing but act another way.

The video backdrop was played at Green Day concerts from July 2009 through November 2009 and during Green Day's performance at the September 2009 MTV Video Awards. On becoming aware that the band was using Scream Icon, Seltzer sent an e-mail advising them of the unauthorized use and offering to work out a resolution. On November 19, 2009, Seltzer registered a copyright in Scream Icon and his counsel sent Green Day a cease and desist letter.

In March 2010, Seltzer sued Green Day and its members, Staub and others (defendants) for direct and contributory copyright infringement, Lanham Act violations and various state law claims. The defendants filed motions for summary judgment and attorneys' fees. The district court granted both , finding that:

The video backdrop was fair use under Section 107 of the Copyright Act.
Seltzer failed to establish trademark rights in the image.
Selter's claims were objectively unreasonable.

Outcome

The Ninth Circuit affirmed the district court's grant of summary judgment on all claims, but vacated its award of attorneys' fees. The court found that:

The defendants' use of Scream Icon qualified as a fair use under the Copyright Act.
Seltzer failed to present sufficient evidence to evaluate whether his use of Scream Icon merited trademark protection.
The district court had erred in finding that Seltzer acted objectively unreasonably, thereby supporting an award of attorneys' fees.

Fair Use

Characterizing the case as close and difficult, the Ninth Circuit concluded that the defendants' use of Scream Icon was fair.

Purpose and Character of the Use

The court found that the nature and character of the use weighed in the defendants' favor because it was:

Transformative.
Only incidentally commercial.

Factors supporting the Ninth Circuit's finding of transformativeness included that:

The defendants used the original artwork as raw material for a new work.
Scream Icon is only a component of the new work.
Altering the work with religious iconography and showing it during a song about religious hypocrisy brought new information, aesthetics, understandings and insights distinct from those of the original.

While recognizing that the video was for an undeniably commercial activity (that is, the Green Day concert tour), the Ninth Circuit was persuaded that the use of Scream Icon was only incidentally commercial because it was not used to market the concert, CDs or other merchandise.

Nature of the Copyrighted Work

The court found the second factor to weigh in Seltzer's favor, but only slightly. The court noted that Scream Icon is a creative (rather than factual) work, and therefore generally deserving of strong copyright protection under this factor. However, the court found the fact that Scream Icon had been published and widely disseminated on the internet and on the streets to be a mitigating factor because Seltzer controlled the first publication of the work.

Amount and Substantiality of the Portion Used

The court did not find the third factor to weigh in either party's favor. The backdrop video quantitatively and qualitatively reproduced most of Scream Icon, a fact that would tend to weigh against a finding of fair use. However, the court found that the defendants took no more than necessary for the intended use where:

The artwork was not meaningfully divisible.
Using the entire work was needed to achieve the intended new expression, meaning or message.

Effect on the Potential Market

The Ninth Circuit found that the evidence did not demonstrate that the defendants' use of the work harmed an existing market or one Seltzer was likely to develop for Scream Icon. Relevant to its conclusion:

Seltzer testified that he did not view the piece as having lost any value and that he had not been told that someone would not buy his work because of the defendants' use.
The video backdrop and the original work, intended as street art, did not have the same market function.
The defendants' use of the work was limited to one song during a three hour concert, and they did not use it for merchandise or promotional material.

In assessing the impact on likely to be developed markets, the court discounted Selter's assertions that another band had used Scream Icon in another video, because Seltzer did not provide information about the license, including how the band used the video, how the video used Seltzer's work and his revenue from the use.

Attorneys' Fees

Turning to the issue of attorneys' fees, the Ninth Circuit found that the district court had abused its discretion in awarding the defendants $200,000 in attorney's fees. The district court concluded that Seltzer's claim was objectively unreasonable because it found that:

Three of the four fair use factors weighed in the defendants' favor.
Seltzer's deposition testimony effectively conceded that the use was transformative.
Seltzer lost on summary judgment.

The Ninth Circuit found the district court's reasoning to be in error because the fact that Seltzer lost does not itself show objective unreasonableness and Seltzer could only express his opinion and not concede whether the defendants' use of his work was transformative. In addition, the Ninth Circuit found the case to be close and difficult, where it found only two of the four fair use factors to weigh in favor of the defendants.

Because the facts that the district court relied on did not lend any meaningful support to determining whether Seltzer should have known from the outset that his case was objectively unreasonable, the Ninth Circuit vacated the award of attorney's fees.

Practical Implications

This case is notable for the Ninth Circuit's deciding what it described as a close and difficult fair use defense at the motion stage. However, the court's decision to vacate the attorneys' fees award and its reasoning underscore the fact-specific nature of fair use analysis. When evaluating whether to rely on fair use or seek permission before using a copyrighted work, a company should carefully weigh all facts, including potential costs of defending its position. Copyright owners similarly are reminded to consider whether a use may be fair before bringing a copyright infringement claim.

Court Documents

Seltzer v. Green Day, Inc., No. 11-56573 (9th Cir. August 7, 2013).

Scream Icon in Green Day Concert Backdrop is Fair Use: Ninth Circuit | Practical Law