Minow: We’re often asked when folks can reproduce book jackets or other cover art on their websites. On August 4, a federal district court ruled in your client’s favor when he published 10 reproductions of the covers of issues of Famous Monsters of Filmland magazine, and 14 other images in his book, Famous Monster Movie Art of Basil Gogos. Tell us the facts of your case, and how the court analyzed Fair Use.
Tillery: The 160-page work is an Artist Career Retrospective of Basil Gogos covering his entire career spanning over 50 years working in several different genres, including the one for which he is most well known, monster art. Vanguard Productions has successfully published over 19 such Artist Career Retrospectives over the years. It is not a simple republication of a series of magazine covers or anything else, but rather a historical, biographical and critical look at the art, life and times of an incredible artist. Most of the works reproduced are in reduced form and most are accompanied by text with comment directly on a referenced piece (though, according to the Second Circuit, anyway, that is not required.). None of the contested images were used on the cover of my client’s book or in its advertising.
Minow: Looking at the Purpose and Character factor in Fair Use – what made the book “sufficiently transformative”?
Tillery: The works were transformed because they were not used for the original purpose for which they were created and used. The original purpose was to attract potential purchasers to a magazine of 69-100 pages of other material, and the book’s purpose was rather to merely illustrate some of the work of the artist over the years, so that it could be explained and discussed in the context of his life, times, industry, development as an artist, etc. Thus, this worked transformed the original art into examples, illustrations of the artist’s works so that readers would understand and appreciate the text and the other non-claimed works in the context of his life, times and career.
Minow: In the Amount and Substantiality factor, when is a cover considered a copyrighted work versus a small portion of a copyrighted work?
Tillery: A cover and the original art upon which it is based is, of course, standing alone a copyrightable work … If the cover is registered and claimed to be infringed individually, then this Factor/Test would find in favor of the plaintiff. Keep in mind this is only one of Four Factors to be considered and the list is non-exclusive and not mechanically or mathematically applied. As you know, copyright exists the moment a copyrightable work is put in fixed form. Thus, the sentence I just typed and this one are protected by copyright law NOW. So, in theory, in a 68-100 page magazine such as the ones at issue here, Famous Monsters of Filmland, there are thousands of copyrightable works. Should each line, paragraph, page, story, photo, ad, etc. be treated, for purposes of this factor as an individual work for purposes of this Factor/Test? I think not. To do so would swallow the Factor into meaninglessness.
In this case, Plaintiffs claimed infringement of 21 Registered Works (originally 36, but they later added 3 new ones and dropped 15, realizing that those were actually in the Public Domain). Each Work claimed was a complete magazine consisting of 68-100 pages filed with art, cartoons, ads, photos, stories, text, letters, etc. None of the individual parts of the magazines were registered or claimed to be infringed. Thus, the “WORK” to be compared to the “portion allegedly taken” was the entire magazine, not the particular portion allegedly taken. Thus, doing the math, if defendant used one page, then he used 1-1.5% of the WORK, not 100% of the individual portion thereof.
The Court here followed clear Third Circuit law here relying on the Video Pipeline case, a case involving the use of a small part of a film. In that case, as in any film case, the Work at issue was a film which obviously consists of thousands of individual photographs, each one of which is, in theory, copyrightable. The defendant there, as the one here, copied a small portion of the entire film (2%), but in so doing, copied 100% of each individual frame of the film, each one of which is, in theory, individually copyrightable. Thus, if this Factor/Test is to have any meaning at all, it must, logically be an analysis which looks at the entire Copyrighted Work as Registered and as claimed, not just a portion thereof, even if, in theory, that portion could have been copyrighted on its own. The Third Circuit got this one right and so did Judge Baylson.
Minow: How important was it whether or not the plaintiff planned his own coffee table book in the Market Effect factor? What about lost licensing opportunities for the use of the images?
Tillery: In this case, the plaintiff did nothing prior to the lawsuit and, in fact, nothing prior to his deposition being taken to pursue this coffee table book opportunity. When he and/or his counsel were alerted by necessary inquiries in a deposition, they must have realized this was a serious defect in their claim and moved quickly to try to correct it. I think the effort was rather half-hearted and had a result that they probably did not expect. The only two potential publishers that Plaintiffs contacted to determine interest later testified under oath that the Gogos book did not adversely affect the market for such a contemplated coffee table book. Further, both said that they remained interested in publishing such a work, with the caveat that Plaintiffs could clear title to the Trademarks and any other copyrightable works from the magazines to be republished, such as the many still photographs from various monster movies owned by film company Universal Studios and others. Plaintiff put in no evidence whatsoever of any lost licensing opportunities due to the publication of the Gogos Book. Because there were none, I believe. If he had in fact taken steps to try to publish or license before the publication of the Gogos Book and if there had been any significant resistance to same because of the publication of the Gogos Book, that might make a different case. He did not and nothing like that happened.
Minow: Anything else you’d like to add?
Tillery: Although this opinion simply applies clear law to the facts at hand and thus breaks no new legal ground, it is a very important example and reminder to the copyright bar, the artistic community and the publishing industry that Fair Use is as important in the constitutional and statutory scheme as Copyright protection itself. If we are to be true to the original purpose of both the Constitutional basis and the statutory goal of the law enhancing creativity to make ours a richer society, we (and Courts) must champion both Copyright Protection and Fair Use. And, we must recompense victorious Fair Use defendants for their fees and costs under the Act, as well.
Minow: Do you know if the plaintiff will appeal?
Tillery: Plaintiff has filed a Notice of Appeal. In light of Judge Baylson’s scholarly opinion, we are confident the Third Circuit will affirm. Pending now before Judge Baylson is Defendant’s Motion for Attorneys’ Fees under Section 505 of The Copyright Act, for over $300,000.
*M. Kelly Tillery represented J. David Spurlock and Vanguard Productions, the co-author and publisher of “Famous Monster Movie Art of Basil Gogos.” He is a national authority in intellectual property and anti-counterfeiting protection, a partner with Pepper Hamilton LLP and a member of the firm’s Intellectual Property Practice Group.
Mary Minow is Executive Editor of the Stanford Copyright & Fair Use site.