District court grants summary judgment holding that defendant’s reproduction of several graphic works, originally used as monster magazine covers by plaintiff, in a book retrospective of an artist’s career is a fair use based on finding that defendant’s use is transformative because the purpose of a retrospective of an artist’s work has a different purpose than magazine covers that are intended to sell copies of the magazineFrom 1958 to 1983, the plaintiff published several movie monster magazines including Famous Monsters from Filmland, Creepy and Eerie. The magazine covers featured movie monster artwork from many artists including Basil Gogos. The defendant published a coffee table book in 2006 called Famous Monster Movie Art of Basil Gogos (the “Gogos Book”). The Gogos Book is a career retrospective of the artist and includes ten images that are digitally scanned copies of the plaintiff’s actual magazine covers and fourteen images that are reproductions of the original artwork featured on the magazine covers (but without the text that appeared on the magazine covers), as well as commentary about the artist and his work.
The plaintiff sued for copyright infringement and common law unfair competition. The parties disputed whether the plaintiff owned the copyright to all of the allegedly infringing works that appeared in the defendant’s book due, in part, to conflicting testimony as to whether the works were works-made-for-hire. However, the defendant conceded for purposes of the summary judgment motions that the plaintiff established ownership and copying. Moreover, the court found the issue of ownership was mooted by the defendant’s reliance on the fair use defense but potentially relevant to the plaintiff’s claim that the defendant engaged in “bad faith.”
Addressing the defendant’s fair use defense, the court noted that the issue of fair use is a mixed question of law and fact, and the Third Circuit has not addressed the extent to which a district court can consider the fair use defense on summary judgment. However, the court cited to Second and Ninth Circuit decisions that recognized that a court may resolve issues of fair use at the summary judgment stage where there are no genuine issues of material fact as to such issues. See Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006); Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003).
The court conducted the four-factor fair use analysis and granted summary judgment for the defendant. Regarding the first factor – the purpose and character of the use – the court held that the defendant’s use of the copyrighted works was transformative because the defendant used the magazine covers to describe and illustrate the artist’s body of work over his lifetime, which is different from the plaintiff’s use of the images on the magazine covers (namely, to sell magazines). In addressing this factor, the court acknowledged that there are “some” characteristics regarding the defendant’s use that do not support his claim of fair use, including the fact that the covers and images are reproduced with little or no modification. However, according to the court, the Gogos Book takes the reader through the history of Gogos’s work and his career, provides commentary from many individuals in the movie monster industry, and is an illustrated biography of an artist. The plaintiff’s magazines had a different purpose: they were devoted to discussing developments in the world of movie monsters, included interviews with actors, and advertised movie monster-related paraphernalia. “What is particularly pertinent to this Court’s analysis and conclusion is that the Gogos Book is appropriately characterized as a biography or a career retrospective . . . [and] biographies in general and critical biographies in particular fit comfortably within these statutory categories” of uses that are a fair use (internal quotations omitted). The court compared this case to Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006), in which the Second Circuit determined that the defendant’s coffee table book, providing a cultural history of the Grateful Dead, was sufficiently transformative, relative to the copyrighted images from Grateful Dead posters and tickets, to be a fair use.
Another consideration in the first factor is the defendant’s bad faith. The plaintiff argued that the defendant acted in bad faith by attempting to obtain a license from the plaintiff and subsequently including the images in his book even though the parties did not come to an agreement about a license. The court stated that the plaintiff’s argument has been explicitly rejected by the U.S. Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). In light of all the evidence and all of the first factor considerations, the court held that the first factor weighs heavily in favor of the defendant.
Regarding the second factor – the nature of the plaintiff’s work – the court held that this factor weighs slightly in favor of the plaintiff but is of limited relevance because the defendant’s use is transformative and because the copyrighted works are out of print (citing Peter Letterese & Assocs., Inc. v. World Inst. of Scientology, 533 F.3d 1287 (11th Cir. 2008) (holding that out of print works are generally accorded less copyright protection)).
Regarding the third factor – the amount and substantiality of the portion used in relation to the copyrighted work as a whole – the court agreed with the defendant’s argument that the amount he used should be measured against the magazine as a whole and rejected the plaintiff’s argument that each magazine cover should be considered an individual work. Accordingly, the portion used by defendant was from 1-1.5% of each magazine as a whole. The court also rejected the plaintiff’s argument that the magazine covers were the “heart” of each issue, noting that the magazine covers were used to entice readers and advertise the content of the magazines.
Regarding the fourth factor – the effect of the defendant’s use on the potential market value of the copyrighted work – the court held this factor slightly favored the plaintiff because the plaintiff provided evidence that he had been interested in publishing a book of magazine covers and that the publication of the defendant’s work would harm the market for the plaintiff’s book. However, the court noted that the plaintiff did not pursue this interest until the defendant published his book, and the court said that the plaintiff’s “failure to exploit his copyrights in the magazine covers for approximately 22 years substantially detracts from his argument on the fourth factor.”
After weighing the factors together and considering the purposes of copyright, the court concluded that “the fair use defense is appropriate here. The fact that the Gogos Book is inherently biographical render[s] it so fundamentally transformative in nature, coupled with the fact that Spurlock utilized such a quantitatively and qualitatively minor portion of the magazines, requires this Court to conclude that Spurlock’s use is fair use and to grant Spurlock’s motion for summary judgment on the copyright claims.”
The court also granted summary judgment to the defendant on the plaintiff’s unfair competition claim after finding that the plaintiff abandoned the mark “Famous Monsters in Filmland.”