- Court grants summary judgment on copyright infringement claims by plaintiffs, holders of copyrights in the songs “The Boys of Summer” and “All She Wants to Do Is Dance,” which were the basis for songs used by defendants without authorization in political campaign ads; court grants summary judgment for defendants on plaintiff’s Lanham Act claims.
Henley filed a DMCA takedown notice with YouTube which removed the video. DeVore filed a counter-notice with YouTube, claiming that the video is a parody and asked YouTube to restore the video to the website. Devore and Hart then created another campaign video called “All She Wants to Do Is Tax” using the same technique.
The plaintiffs then sued for direct, vicarious and contributory copyright infringement, as well as trademark infringement and false endorsement under the Lanham Act. The defendants claimed their versions of the songs are parodies and that their use of the plaintiffs' song is fair use and both parties moved for summary judgment. The court conducted the four-factor fair use analysis and granted summary judgment to plaintiffs on the copyright infringement claims, finding against defendants on the fair use issue.
The court began by distinguishing parody (in which the copyrighted work is the target) from satire (in which the copyrighted work is merely a vehicle to poke fun at another target). As the court explained, citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), the parodist is justified in using the copyrighted work because a parody’s effectiveness “necessarily springs from the recognizable allusion to its object through distorted imitation”; the parodist has no alternative but to use the work. In contrast, the satirist who ridicules subjects unrelated to the work lacks the same claim to use of the work, which the satirist “merely uses to get attention or to avoid the drudgery in working up something fresh.”
Then the court discussed whether criticism of the author of an original work is a parody or a satire. “In other words, is a work which appropriates from the original to criticize the original’s author – but does not directly criticize the content of original – validly classified as ‘parody’?” According to the court, the appellate courts have not squarely addressed this issue and the district courts that have addressed it are split.
The court reviewed several decisions in which a court rejected the argument that use of a work to criticize the work’s author constitutes parody (including Salinger v. Colting, 641 F. Supp. 2d 250 (S.D.N.Y. 2009), rev’d on other grounds, 2010 WL 1729126 (2d Cir. Apr. 30, 2010), and Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559 (S.D. Cal. 1996)), and decisions in which a court accepted the “parody-of-the-author” fair use defense (including Bourne Co. v. Twentieth Century Fox Film Corp., 602 F. Supp. 2d 499 (S.D.N.Y. 2009) and Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962 (C.D. Cal. 2007)). Ultimately, the court stated that it did not need to determine on the facts of this case whether any altered work that parodies the original’s author would qualify as a transformative parody under Campbell because “[e]ven assuming that ‘parody-of-the-author’ is a legitimate transformative purpose, the Defendants’ songs do not satisfy the fair use analysis, as discussed below. ‘Tax’ does not target Henley at all, and ‘November,’ which only implicitly targets Henley, appropriates too much from ‘Summer’ in relation to its slight jab at Henley and risks market substitution for ‘Summer’ or its derivatives.”
The court then conducted the four-factor fair use analysis (codified at 17 U.S.C. § 107) for defendants’ use of each song.
The first factor examines the purpose and character of the work and whether the new work is transformative. The defendants claimed that their video called “The Hope of November” parodies “The Boys of Summer” by using its themes of nostalgia and disillusionment to mock Henley and other Obama supporters who, in “November,” look back wistfully at Obama’s campaign and bemoan his failure to deliver on the promised “hope.” However, the court stated that the defendants’ video does not comment on or criticize the content of “Summer” – the themes of nostalgia and disillusionment in general, or on summer romances, Deadheads, or Cadillacs in particular. According to the court, the defendants’ video “uses those themes and devices to mock a separate subject entirely, namely Obama and his supporters.”
The court cited the district court’s decision in Salinger v. Colting, in which the court found that the defendant, who wrote an “unofficial sequel” to Catcher in the Rye, had failed to demonstrate a probability of success on his parody defense because the sequel, rather than commenting on the character of Holden Caufield, merely repeated the elements of the character in a new setting. “The defendant had simply taken the Caufield character, aged him sixty years, and placed him in a modern environment, without giving legitimate commentary on the character. Similarly here, the Defendants’ song simply takes the narrator of ‘Summer,’ who is (supposedly) disappointed by the result of 1960’s politics and places him in the current political environment, where he is disappointed by the result of Obama’s election. . . . ‘November’ simply does not comment on or critique the disappointment expressed in ‘Summer.’” (citations omitted) The court also rejected the defendants’ argument that “November” pokes fun at Henley himself as a supporter of Obama, explaining that such a parody must target the author directly, as opposed to targeting the author’s views generally.
The court then applied the first fair use factor to the defendants’ use of “All She Wants to Do Is Dance” in their video called “All She Wants to Do Is Tax.” According to the court, the defendants argued that their song can be interpreted as a criticism of American foreign policy in Latin America in the 1980s and the American public’s indifference toward the situation. However, the court stated that even taking the defendants’ interpretation as true, their song does not comment on “Dance,” but instead uses the same themes to comment on entirely different subjects, namely Barbara Boxer, taxation, global warming, and the proposed cap-and-trade program. “[A]s with ‘November,’ the Defendants evoked the same themes of the original in order to attack an entirely separate subject. This is satire, not parody.” The court also concluded that “Tax” does not directly target Henley or Kortchmar as it makes no implicit or explicit reference to either of them.
The court also analyzed whether the defendants’ use of the songs had a commercial purpose. According to the court, in the Ninth Circuit monetary gain is not the sole criterion, particularly in a setting where profit is difficult to measure in dollars. The court held that the defendants’ use is a commercial use because DeVore and Hart stood to gain publicity and campaign donations from their use of Henley’s music.
To sum up the first factor, the court stated: “Accordingly, both songs are used for commercial purposes under the fair use analysis, which weighs against the Defendants. The fact that ‘Tax’ does not constitute parody also weighs against the Defendants. Assuming that ‘parody-of-the-author’ is legitimate transformation under Campbell, ‘November’s’ implicit targeting of Henley weighs slightly in the Defendants’ favor.”
Turning to the second fair use factor – the nature of the copyrighted work – the court held that the plaintiffs’ works are expressive and “at the core of copyright protection.” However, with respect to “November,” which the court said may have some parodic character, “this factor does not weigh heavily in the overall analysis in recognition that parodies ‘invariably copy publicly known, expressive works.’ ‘Tax,’ on the other hand, has little claim to parody, as discussed above. Thus, the fact that ‘Tax’ borrows from a musical composition, a highly expressive work that is at the core of copyright, weighs against the Defendants in the fair use balancing.” (citations omitted)
The third factor – the amount and substantiality of the work used – weighs in favor of the plaintiffs. The court said that it is undisputed that both “November” and “Tax” borrow heavily from the respective originals. The defendants used karaoke tracks of each song as background and Hart supplied vocals; the melodies remain identical, as do the rhyme scheme and syntax; and while the defendants changed some of the lyrics, 65% of the “Summer” lyrics and 74.7% of the “Dance” lyrics were copied verbatim.
The court also found that the fourth factor – the effect of the defendants’ use of the copyrighted works on the market for the original works – weighs in favor of the plaintiffs. The court explained that the defendants failed to make an adequate showing that their use did not harm the market for the plaintiffs’ works. “The question is not whether ‘November’ and ‘Tax’ specifically threaten the market for the original; the question is whether widespread dissemination of similar satirical spins on the Plaintiffs’ music will harm the market for the original. Relevant to this inquiry is the fact that the Defendants have taken the entire musical composition and have changed a minimal amount of lyrics. The Court cannot say as a matter of law that widespread use in a similar manner would not harm the market for the original.” (citation omitted)
With regard to the market for derivative works, the court noted, “whether the Plaintiffs have actually permitted licensing is irrelevant because the copyright laws protect the ‘potential market’ for derivatives.” Furthermore, the court reasoned that the defendants’ use could supplant the market for derivatives of “Summer” and “Dance” because licensees and advertisers do not like to use songs that are already associated with a particular product or cause.
The court concluded that the defendants’ version of “All She Wants to Do Is Dance” is “pure satire which fails to take aim at the original or its author. It therefore lacks justification to borrow from ‘Dance,’ which, as a musical composition, lies at the core of copyright protection. And it does far more than borrow from ‘Dance’ — it appropriates the entire melody, rhyme scheme, syntax, and a majority of the lyrics. Defendants have also failed to show that widespread use of this and similar satirical songs would not affect either the market for the original or potential derivatives. ‘Tax’ is clearly not fair use.”
Regarding defendants’ use of “The Boys of Summer” in their video “The Hope of November”, the court said such use presents a closer question, assuming that targeting the author is a legitimate parodic purpose. “Although it primarily targets Obama, it does, in part, lampoon Henley as an Obama supporter. It may thus contain some parodic element and would be justified in appropriating some of ‘Summer.’ However, ‘November’ goes far beyond what is necessary to conjure up Henley to hold him up to ridicule. As with ‘Tax’, ‘November’ copies the melody, rhyme, syntax, and most of the lyrics. Given the extent of the copying, Defendants have not met their burden of demonstrating the absence of market impact. . . . Because the Defendants have failed to meet their burden of establishing a fair use defense, the Plaintiffs are entitled to summary judgment on their direct copyright infringement claim.”
The court also granted summary judgment to the plaintiffs on the contributory copyright infringement claim but not vicarious infringement. According to the court, it is undisputed that DeVore knew that Hart made and distributed the infringing videos and in fact had materially contributed to the creations by writing the songs. DeVore also had supervisory control over Hart, one of his campaign managers, and directly benefited from the infringement. “The undisputed evidence also shows that Hart suggested making the internet videos, thereby inducing DeVore’s acts of infringement. He is therefore liable for contributory infringement. However, because Hart did not exercise any supervisory control over DeVore, he is not vicariously liable.”
The court declined to decide whether the infringements were willful on summary judgment. The plaintiffs argued that the defendants’ belief that their use was a fair use was not in good faith, as evidenced by their distribution of the campaign videos on YouTube without first consulting an attorney. “The Court declines to hold that an infringer must, as a matter of law, consult an attorney or investigate complicated fair use doctrine to avoid a finding of willfulness. Whether the Defendants ‘took reasonable steps to assure fair use’ is a matter for the jury.”
The court granted summary judgment for the defendants on the Lanham Act claims based on the same facts.