The United States Court of Appeals for the Ninth Circuit affirmed the district court’s summary judgment favoring the defendants, including Green Day and associated parties, in a case brought by artist Derek Seltzer. Seltzer alleged violations of the Copyright Act and the Lanham Act due to the unauthorized use of his illustration, "Scream Icon," in a video backdrop for the band’s stage show. The court determined that the use constituted "fair use" under copyright law, citing several factors: the transformation of the illustration’s message, the non-commercial nature of the use, the illustration's status as widely disseminated street art, and the lack of a negative impact on the illustration's market value. The court also affirmed the dismissal of Seltzer's Lanham Act claims, noting he did not establish trademark rights. However, it vacated the award of attorneys' fees to the defendants, concluding that Seltzer did not act unreasonably despite the defendants' fair use defense. Seltzer's "Scream Icon," created in 2003, has been widely distributed and used in various forms, including as street art and in advertisements for his gallery appearances.
Roger Staub, a photographer and video designer, took a photograph of a graffiti-covered brick wall in Los Angeles in 2008, which included a weathered copy of the artwork "Scream Icon." In 2009, in anticipation of Green Day's tour for their album "21st Century Breakdown," Staub was commissioned by Performance Environment Design (PED) to create video backdrops for the band's performances. He produced backdrops for all thirty-two songs on the set list, including the song "East Jesus Nowhere," which addresses the hypocrisy and violence associated with religion.
Staub’s video for "East Jesus Nowhere," played during approximately seventy concerts and at the MTV Video Music Awards, features an accelerated depiction of graffiti artists altering a brick alleyway, prominently displaying a modified version of "Scream Icon" with significant alterations. The original image was altered by adding a red cross and modifying its colors and contrast, while still allowing the original artwork to be identifiable.
After becoming aware that his artwork was being used without permission, Seltzer, the copyright holder of "Scream Icon," attempted to resolve the issue with Green Day but ultimately registered his copyright on November 19, 2009, and sent a cease-and-desist letter. Green Day ceased using the backdrop following this notification. In March 2010, Seltzer filed a lawsuit alleging copyright infringement and other claims. The court granted summary judgment to Green Day, ruling that Staub's work constituted fair use, and later awarded Green Day $201,012.50 in attorney’s fees, finding Seltzer’s claims to be objectively unreasonable. Seltzer has since appealed both the summary judgment and the fee award.
The fair use doctrine allows courts to apply flexibility in copyright law to encourage creativity, as established in Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569 (1994). According to 17 U.S.C. § 107, fair use is not copyright infringement and involves evaluating four factors: (1) the purpose and character of the use, focusing on whether it is commercial or for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used relative to the whole; and (4) the effect on the market for the original work. These factors must be considered collectively in the context of copyright's objectives. The determination of whether Green Day's use of Seltzer’s Scream Icon constitutes fair use is a mixed question of law and fact, assessed de novo. When the underlying facts are undisputed, appellate courts can draw conclusions without jury input, as seen in prior cases like Fisher v. Dees. The first fair use factor emphasizes the transformative nature of the new work, with the Supreme Court noting that greater transformation lessens the weight of other factors. However, the interpretation of transformation can be contentious, as illustrated by various circuit court disagreements. A prominent copyright treatise has criticized the inconsistent application of the transformation test, highlighting its ambiguous usage in legal contexts. The discussion acknowledges the complexity and variability of judicial interpretations surrounding transformation in fair use cases.
The Supreme Court in Campbell established that a work is transformative when it adds new expression, meaning, or message, altering the original. This principle is rooted in Judge Pierre Leval’s 1990 article, which emphasized that transformative use must be productive and employ the quoted material in a different manner or for a different purpose than the original. Simply repackaging copyrighted material does not qualify as transformative; rather, a secondary use that adds value and creates new information or insights is protected under the fair use doctrine.
In assessing Green Day's use of the Scream Icon in their video backdrop, it is deemed transformative because the original work is employed as "raw material" rather than merely quoted or republished. The video integrates the Scream Icon within a broader commentary on religion, diverging from the original's themes, which do not address religion. This context creates new meanings and insights, as acknowledged by the original creator, Seltzer, who noted that the video altered the original's message. The conclusion on transformation aligns with other appellate decisions, contrasting with cases where the original work's expressive content remains unaltered. Examples of non-transformative uses include the publication of celebrity photos without new expression or the use of copyrighted clips that maintain their original entertainment value.
An allegedly infringing work is considered transformative if it exhibits new expressive content or a different message, regardless of minimal physical alterations to the original. Case law supports this view, highlighting examples such as the transformative use of copyrighted photographs in artistic works and historical contexts. Green Day's use of Scream Icon was determined to be transformative, as it did not serve a marketing purpose despite the commercial nature of their concert. The first fair use factor favors Green Day because their use was incidental rather than exploitative.
The second factor evaluates the nature of the copyrighted work, where Scream Icon is recognized as a creative work deserving strong protection. However, the work's prior publication—widely disseminated before its use—mitigates this protection, weighing slightly in Green Day's favor.
The third factor examines the amount and value of the original work used. Although Green Day copied most of Scream Icon, the court acknowledges that a work not being divisible means copying the entire piece does not automatically negate fair use, as long as only what is necessary for the intended use is taken. Overall, this factor is less detrimental to Green Day despite the significant amount copied.
The legal analysis examines the fair use doctrine as it pertains to Green Day's use of Seltzer's artwork, Scream Icon. The Supreme Court's precedents indicate that the extent of permissible copying is influenced by the purpose and character of the use. Green Day's use was deemed necessary to convey a new expression, thus not weighing against fair use.
The fourth factor evaluates the impact on the market for the original work. It requires assessing market harm from the alleged infringement and whether widespread unauthorized use could harm the original's market. Seltzer testified that while he personally disliked Green Day’s use, it did not diminish the value of his artwork, as he had not experienced any loss in sales. Green Day's use served a different market function, being part of a live performance and not intended for merchandise or promotional use, further supporting fair use.
Seltzer’s claim of a prior licensing for a music video featuring Scream Icon lacked sufficient detail to demonstrate market harm from Green Day’s actions. Overall, the evaluation of the four fair use factors favored Green Day, particularly the first and fourth factors, which are considered most significant in case law. Consequently, the district court's summary judgment in favor of Green Day regarding Seltzer’s copyright infringement claims was upheld. Additionally, the court granted summary judgment on Seltzer’s claims under the Lanham Act, which addresses commercial use that could cause confusion regarding affiliation or association.
Seltzer did not provide sufficient evidence to demonstrate that he used the Scream Icon image as a trademark in the sale of goods or services, failing to establish any trademark rights. The court highlighted that for trademark rights to be acquired, a mark must be used in the regular course of trade on goods or packaging, or on related documents if impractical. Seltzer claimed that his use of the image in advertisements for an art gallery show constituted trademark use, but he did not prove that this use was widely recognized or identifiable to the public. Consequently, the district court granted summary judgment to Green Day regarding Seltzer's Lanham Act claims.
Additionally, the district court awarded Green Day over $200,000 in attorney's fees, which is subject to an abuse of discretion review. The standard assesses whether the district court's findings or application of law were illogical or unsupported by the record. In evaluating attorney's fees, courts consider factors such as the degree of success, frivolousness, motivation, the reasonableness of arguments, and the need for compensation and deterrence.
The district court found Seltzer's claim objectively unreasonable, based on his loss at summary judgment and the favorable fair use factors for Green Day. However, the conclusion that Seltzer's case was objectively unreasonable was not supported, as losing a case alone does not establish this. The appellate review noted that Green Day only prevailed on two out of four fair use factors, contradicting the district court's assessment. Furthermore, Seltzer’s deposition statements about his work’s transformation were subjective and did not definitively concede that Green Day's use was transformative. The case was deemed close and complex, with mixed fair use factors and no clear indication that Seltzer should have anticipated a poor chance of success. Thus, the appellate court vacated the attorney's fees award, concluding that the district court erred in its determination of Seltzer's unreasonable conduct. The decision was affirmed in part and vacated and remanded in part, with all parties bearing their own costs on appeal.
