Opposition Brief — Campbell v. Acuff-Rose Music, Inc.

s,.

rey re

No. 92-1292

In The

Supreme Court of the United States

a

October Term, 1992

LUTHER R. CAMPBELL a/k/a LUKE SKYYWALKER,

CHRISTOPHER WONGWON a/k/a FRESH KID ICE, MARK

ROSS a/k/a BROTHER MARQUIS, DAVID HOBBS a/k/a

MR. MIXX; professionally known as THE 2 LIVE CREW;

LUKE SKY YWALKER RECORDS,

Petitioners,

VS.

ACUFF-ROSE MUSIC, INC.,

Respondent.

On Petition for a Writ of Certiorari to the United States Court

of Appeals for the Sixth Circuit

RESPONDENT’S BRIEF IN OPPOSITION

R. EDDIE WAYLAND

Counsel of Record

NORA T. CANNON

F. CASEY DEL CASINO

E. ANDREW NORWOOD

KING & BALLOW

Attorneys for Respondent

1200 Noel Place

200 Fourth Avenue North

Nashville, Tennessee 37219

(615) 259-3456

3143

Ly late (800) 3 APPEAL + (800) 5 APPEAL + (800) BRIEF 21

ervices, inc

QUESTIONS PRESENTED

I. Whether the United States Court of Appeals for the Sixth

Circuit properly applied this Court’s decisions in Sony Corp. of

America v. Universal City Studios, Inc., 464 U.S. 417 (1984) and in

Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S.539

(1985) in deciding this case?

II. Whether the application of Rule 301 of the Federal Rules of

Evidence is properly before this Court or is relevant to this case?

III. Whether the commercial purpose of a derivative work

weighs against a finding that the use of the underlying copyrighted

work is fair?

IV. Whether consideration of the effect on the potential market

for or value of a copyrighted work is a proper consideration for

determining whether a particular use of acopyrighted work is fair?

ae

ii

RULE 28.1 LISTING

Acuff-Rose Music, Inc. is a Tennessee corporation. It is a

wholly owned subsidiary of Opryland Music Group, Inc. Opryland

Music Group is a subsidiary of Opryland USA, Inc., which is a

subsidiary of Gaylord Broadcasting Co., which is a subsidiary of

TGF Company, which is a subsidiary of Gaylord Entertainment

Company, a publicly held corporation. Acuff-Rose Music

Incorporated’s affiliated corporations are Milene Music, Inc. and

Springhouse Music, Inc.

I. The United States Court of Appeals for the Sixth

Circuit properly applied this Court's decisions in

Sony Corp. of America v. Universal City Studios,

iv

Contents

Inc., 464 U.S. 417 (1984) and in Harper & Row

Publishers, Inc. v. Nation Enterprises, 471 U.S.

539 (1985) in deciding thiscase. ...... biddabd oa

A. Sixth Circuit's Application of Precedent ... .

Il. The application of Rule 301 of the Federal Rules of

Evidence is neither properly before this Court nor

relevant to this case. .........sceesccccsceces

Ill. The commercial purpose of a derivative work

weighs against a finding that the use of the

underlying copyrighted work is fair. ...........

IV. Consideration of the effect on the potential market

Brewer v. Hustler Magazine, Inc., 749 F.2d 527 (9th Cir.

TUE) edecusdaducocesccoceceosbecudanudeasese

Page

10

10

13

17

14

15

Vv

Contents

Page

Elsmere Music Inc. v. National Broadcasting Co., 623 F.2d

SEE ENED ccesccscccnsoccccccccccesoces 14, 16

Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986) ....... 14, 16, 18,22

Goldstein v. California, 412 U.S.546(1973) .......... 12

Harper & Row Publishers, Inc. v. Nation Enterprises, 471

U.S. 539(1985) ....... i, 10, 11, 12, 13, 15, 16, 18, 20,21, 22

Hustler Magazine Inc. v. Moral Majority, Inc., 796 F.2d

SRG BUEED cc ccccccscccccccccccescccese 22

New Line Cinema Corp. v. Bertlesman Music Group, Inc.,

693 F. Supp. 1517 (S.D.N.Y. 1988) ..........-6055. 14

Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) . . .14, 15, 16, 20, 23

Salinger v. Random House, 811 F.2d 90 (2d Cir. 1987) ... 16

Sony Corp. of America v. Universal City Studios, Inc., 464

U.S. 417 (1984) ......... pescdedd i, 10, 11, 12, 13, 15, 16,21

Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th

Gn BGR ew ncbboddotascoccscdodocencse cece 14, 16

Warner Bros., Inc. v. American Broadcasting, Inc., 523 F.

Supp. 611(S.D.N.Y. 1981) .......-.0ccee ec eeeees 15

Warner Bros., Inc. v. American Broadcasting, Inc., 654

PORE GOUED Cesc cccccccccccccoccccces 14,15

vi

Contents

Page

Youakim v. Miller, 425 U.S. 231(1976) .............. 17,18

Statutes Cited:

So NEED Seebecovetedeeuwess de écbewésboeces 12

SP ED Ob oSCoUbeceresocececdeccceosceses 16

SOCIO Sebscbéccbcccchccesocccaul 13, 14, 16, 18, 19

Rules Cited:

Federal Rule of Evidence301 ............cccceceees i, 17

DUT NS bbb 0 cc dec dcccccceceissees 8,17

Supreme Court Rule 10.1(@) ..........cccecccenevess 2, 16

Other Authorities Cited:

Harlon, Manning the Dikes, 13 Record of N.Y.C. Bar Ass'n

POSE SeebbvicccocevecedocceccsseRssiiséei 16

Sanders & Gordon, Stranger in Parodies: Weird Al and the

Law of Musical Satire, 1 Fordham Ent., Media & Intell.

CO EE ee 3,12

12 J. Moore, Moore’s Federal Practice | 810.21 (2d ed.

SUE Dacedadiddeneetsdscsesncesaabaenssesccs 16

l

No. 92-1292

Supreme Court of the United States

October Term, 1992

LUTHER R. CAMPBELL a/k/a LUKE SKYYWALKER,

CHRISTOPHER WONGWON a/k/a FRESH KID ICE, MARK

ROSS a/k/a BROTHER MARQUIS, DAVID HOBBS a/k/a MR.

MIXX; professionally known as THE 2 LIVE CREW; LUKE

SKY YWALKER RECORDS,

Petitioners,

vs.

ACUFF-ROSE MUSIC, INC.,

Respondent.

On Petition for Writ of Certiorari to the United States Court of

Appeals for the Sixth Circuit

RESPONDENT’S BRIEF IN OPPOSITION

STATEMENT OF JURISDICTION

Respondent Acuff-Rose Music, Inc. (“Acuff-Rose™) does not

disagree with the statement of jurisdiction contained in the

Petition for Writ of Certiorari (“Petition”) at 2,' except that Acuff-

Rose contends that the Petition does not meet the requirements set

1. The Petition for Writ of Certiorari shall be cited as “Petition at_.”

2

forth in Rule 10.1(a) of the Rules of the Supreme Court for this

Court to grant certiorari.

STATEMENT OF THE CASE

A. Background

This lawsuit involves the Petitioners’ unauthorized use of

Acuff-Rose’s song “Oh, Pretty Woman.” App. 2a-3a. “Oh, Pretty

Woman” was written by Roy Orbison and William Dees in 1964

and assigned to Acuff-Rose that year. App. 2a. The copyright was

properly registered. Id. Acuff-Rose has received substantial

income on “Oh, Pretty Woman” from the use of Roy Orbison’s

recording, from numerous additional recordings, and from

licensing of derivative works, such as television commercials and

movies. See App. 2a: Declaration of Gerald Teifer at { 10.

Petitioners, Luther R. Campbell a/k/a Luke Skyywalker,

Christopher Wongwon a/k/a Fresh Kid Ice, Mark Ross a/k/a

Brother Marquis, David Hobbs a/k/a Mr. Mixx, professionally

known as The 2 Live Crew, and Luke Skyywalker Records (“the

Petitioners”), copied portions of Respondent’s song and

incorporated, apparently through sampling, other portions of

Respondent's song into their work “Pretty Woman.” R. 7: Affidavit

of Luther Campbell at pp. 1-2; R. 4: Affidavit of Oscar Brand at pp.

3-4; R. 8: Affidavit of William Krasilovsky at pp. 2; R. 14:

Declaration of Earl Speilman at pp. 2-4.

B. Use Of The Copyrighted Work

Contrary to the impression left by the Petition, the chronology

of Petitioner’s use of the copyrighted work is disputed and is not

well developed in the record. App. 3a, n.2. What is clear, however,

is that in May 1989, Petitioner Luther Campbell claims to have

written “Pretty Woman,” a work derived from Acuff-Rose’s “Oh,

Pretty Woman.” App. 2a-3a: R. 7: Affidavit of Luther Campbell

Part I ¥ 2. No later than June, 1989, Petitioners released an album

3

entitled As Clean As They Wanna Be containing the derivative

work, their version of “Oh, Pretty Woman.” See R. 7: Affidavit of

Luther Campbell, Part Ii ¥ 4. The trial court incorrectly found that

the album was released on July 15, 1989. App. 3a, n.3: R. 25. In

Acuff-Rose’s Memorandum in Support of Motion to Compel,

pending when summary judgment was granted, Acuff-Rose

pointed out evidence that sale of As Clean As They Wanna Be had

actually commenced before either date. App. 3a-4a: R. 21:

Memorandum in Support of Motion to Compel, Exhibit A. In fact,

the limited records produced to Acuff-Rose by Petitioners showed

significant album sales before the end of June, 1989.

C. Licensing Request

The Petition also gives an incomplete picture of the licensing

request made by Petitioners. On July 5, 1989, after Petitioners

admit sale to the public commenced, Petitioners requested a

license to “do a parody.”* App. 3a: R. 7. Affidavit of Luther

Campbell Part II { 1 (stating that permission was sought to write

and perform a parody). In their request, Petitioners misled Acuff-

Rose about the prior public release by indicating that the use would

be made in the future. App. 3a-4a. They did not disclose that the

parody’ was already written and recorded and that the album was

2. In the license request, Petitioners stated that they intended to do a

parody in the style of Weird Al Yankovic. R. 7: Affidavit of Luther Campbell

Exhibit A. Yankovic, recognizing that the extent of his copying in creating a

parody does not allow him to qualify for a fair use privilege, secures a license

from the copyright owner before creating a parody of the copyrighted work.

Sanders & Gordon, Stranger in Parodies: Weird Al and the Law of Musical

Satire, 1 Fordham Ent., Media & Intell. Prop. L. F. 11, 35-36 (1990).

3. Acuff-Rose has used the term parody for the sake of conforming its

Opposition more closely to the Petition. This decision is for convenience of the

reader only and should not be read as meaning that Acuff-Rose concedes the

Petitioners’ derivative work was a legal parody. See App. 10a, n. 8 (district

court’s parody analysis does not comport with proper analysis of that term),

Acuff-Rose’s brief to the Sixth Circuit at 17-20.

4

already on sale. See id. On July 17, 1989, Acuff-Rose denied a

license to use its copyrighted work as the basis of a derivative

work. App. 4a. Even though Acuff-Rose refused a license,

Petitioners continued with the sale of the derivative work. Jd. The

album, both before and after a license was denied, carried a label

that stated the derivative work was actually Acuff-Rose’s

copyrighted work. See CD Cover filed with this Court by

Petitioners as Exhibit B.

D. Material Facts In Dispute

Petitioners contend that the affidavits submitted by Acuff-

Rose in response to the Motion to Dismiss did not place any facts in

dispute. Petition at 5. This is not the case. The derivative work and

Acuff-Rose’s “Oh, Pretty Woman” were extensively compared in

affidavits by experts for the parties. App. 5a: R. 4: Affidavit of

Oscar Brand; R. 8: Affidavit of William Krasilovsky; R. 14:

Declaration of Earl Speilman. In addition, tapes of the two works

were submitted to the trial court. R. 1: Complaint, Exhibits D and

E. Facts were in dispute.

One of Petitioners’ experts, an attorney, expressed the opinion

that Petitioners’ “Pretty Woman” evokes “Oh, Pretty Woman” but

that “the line between infringement and fair use was not

exceeded.” R. 8: Affidavit of William Krasilovsky at { 3d.

Petitioners also tendered the affidavit of an expert who writes

parodies. He conceded the extensive copying that Acuff-Rose’s

expert discussed. However, he concluded that, because the

Petitioners created a parody as the affiant frequently did, as a

matter of public policy they should be “encouraged and protected.”

App. Sa: R. 4: Affidavit of Oscar Brand { 20.

Acuff-Rose submitted the affidavit of Earl V. Speilman, a

musicologist. Speilman concluded that the two works were

substantially similar, that parts of the copyrighted work probably

5

had been sampled, and that even the musically unsophisticated

would immediately conclude that “Pretty Woman” was modeled

after “Oh, Pretty Woman.” R. 14: Declaration of Earl Speilman ¥{

5, 8. Speilman stated that the “significant amount of similarity”

between the copyrighted work and the derivative work included:

a. the one measure guitar lick, which is

repeated over and over again in the intro and

subsequent transition sections (and which may

have actually been sampled or lifted and then

incorporated into the recording of “Pretty

Woman” [the derivative work] as performed by

The 2 Live Crew);

b. the duplication of the opening line of text of

“Oh, Pretty Woman” [the copyrighted work]

and the use of the words of the title an

additional six times in the course of the

remainder of “Pretty Woman”;

c. the melodic line of the verse sections of the

respective songs;

d. the melodic line of the bridge sections of the

respective songs;

e. aspects of the formal structures; the opening

measure of percussion; the lyrical structures of

the respective texts; and the fact that both

works are performed in the same key and at

approximately the same tempo.

App. 5a: R. 14: Declaration of Earl Speilman { 7. He also stated

that “if someone were to just listen to the two works at issue, no

matter what the extent of their musical sophistication, one would

immediately recognize that “Pretty Woman” [the derivative work]

6

was modeled after “Oh, Pretty Woman” [the copyrighted work].”

R. 14: Declaration of Earl Speilman { 8.

In addition to the conflicts over the substantiality of the

taking, the evidence was also in conflict about the effect on the

market for Acuff-Rose’s work, although the district court found

that Acuff-Rose had not produced “convincing evidence” to

disprove Petitioners’ defense of fair use. R. 25: Memorandum

Opinion at 14. Acuff-Rose submitted the affidavit of its Director of

Licensing, Gerald E. Teifer, who stated:

If The 2 Live Crew’s derivative work should

become widespread, it would further impair

the value of the copyrighted work, and future

opportunities for licensing it.

R. 15: Declaration of Gerald Teifer at { 12. Teifer also stated that

Acuff-Rose’s income from the copyrighted work and the market

for the copyrighted work extended beyond the market for Roy

Orbison’s recording of it. Jd. at {J 10 and 11. Such potential

markets as movies, other productions, advertising, and marketing

campaigns were listed by Teifer as examples of Acuff-Rose’s

income sources from the copyrighted work. R. 15: Declaration of

Gerald Teifer at { 10.

In contrast, Petitioners submitted only the conclusory

opinions of its two experts about intended audiences. These

affidavits concluded that the intended audience for one of the uses

Acuff-Rose has made of its copyrighted work, Roy Orbison’s

recording, and the intended audience for one of Petitioner’s uses of

the derivative work, a recording on As Clean As They Wanna Be,

were not the same audiences. R. 4: Affidavit of Oscar Brand {f 18-

19; R. 8: Affidavit of William Krasilovsky { 3c. Krasilovsky stated

that “the record collector seeking the original composition would

be highly unlikely to purchase or tune into the 2 Live Crew

7

version.” R. 8: Affidavit of William Krasilovsky at { 3c. See

discussion at Part IV, infra. The contents listed on the label of the

As Clean As They Wanna Be album represent to the public that the

album contains the copyrighted work, as written by Roy Orbison

and William Dees. R. 7: Affidavit of Luther Campbell, Exhibit C.

E. Discovery

The Petition ignores the discovery requests that were

outstanding at the time the dispositive motion was decided by the

district court. Acuff-Rose served discovery requests in this case

along with the complaint. Petitioners failed to respond timely and

properly to Acuff-Rose’s discovery, and Acuff-Rose filed a motion

to compel during the pendency of the dispositive motion. R. 20:

Motion to Compel. The motion to compel was never decided

because, on January 14, 1991, the district court granted partial

summary judgment to the Petitioners. R. 25 : Memorandum of the

Court.

F. Interpleader

Throughout this litigation, Petitioners have sought to

demonstrate (presumably) their good faith based on their offer to

pay statutory mechanical royalties and the fact that they

interpleaded funds into the district court. The statement of the case

in the Petition gives less than a complete explication of this point.

Petitioners moved to deposit with the district court the money

Petitioners said they owed to Acuff-Rose: an amount of money

calculated based on the statutory mechanical rate under the

Copyright Act. App. 4a, n. 3: R. 6: Motion to Deposit Funds. The

court accepted the interpleader. R. 11: Order. Significantly,

Petitioners made no effort to calculate or pay any amounts due or

any amounts owed until after this lawsuit was commenced. R. 7:

- Affidavit of Luther Campbell { 5.

When the district court issued its memorandum opinion

finding that the Petitioners’ unlicensed use of “Oh, Pretty Woman“

was a fair use, it reserved the question of the “adequacy” of the

compensation interpleaded by Petitioners. The district court

requested briefing on entitlement to the interpleaded funds and on

additional market effects after issuing its Memorandum Opinion.

R. 43: Order. With that brief, Acuff-Rose submitted an affidavit

detailing actual, unlicensed, and commercial uses that had been

made of “Oh, Pretty Woman” following the determination that the

substantial copying by Petitioners was proper. R. 45: Declaration

of Jerry Flowers.‘ Despite this additional evidence of the adverse

market effects suffered by Acuff-Rose, the district court confirmed

its finding of fair use. R. 47: Order.

The district court returned the interpleaded mechanical

royalties to the Petitioners. Jd.

SUMMARY OF ARGUMENT

Rule 10.1 of the Rules of the Supreme Court delineate the

special and important circumstances in which this Court will grant

a petition for certiorari. Petitioners’ argument presents none of

these circumstances. Petitioners claim that certain cases decided

by this Court have overruled cases decided by the courts of appeal.

4. Among the uses Flowers noted were, on April 4, 1991, a radio station

aired a song “Is That A Woman” that was based on “Oh, Pretty Woman.” R. 45:

Declaration of Jerry Flowers at { 24. “Is That A Woman” used the entire melody,

the opening guitar refrain, and the overall structure of “Oh, Pretty Woman”

unaltered, and merely changed the lyrics. /d. In addition, a Nashville club used

“Oh, Pretty Woman,” with altered lyrics, as its advertising theme song. /d. at {

26. Another rap group, Brother Makes 3, prepared a recording incorporating

large segments of the copyrighted work. /d. at {{ 27-31. Before the court's

approval of the Petitioners’ use, no such unauthorized uses had been reported. /d.

at {¥ 23, 32. Each of these types of use had in the past been the source of potential

licensing income to Acuff-Rose. /d. at ¥] 9-22; see R. 15: Declaration of Gerald

Teifer{ 10.

9

Even assuming for purposes of argument that this supposition is

correct, any inconsistency between the decisions of the courts of

appeal and later decisions of this Court is not a reason for this Court

to grant certiorari.

Petitioners claim that the Court of Appeals for the Sixth

Circuit wrongly decided this case, but they do not claim that the

lewer pues S lovision SPST ATEN as ae en ee ae

course of judicial proceedings as to or ane oO

al Court’s power of supervision.” Further, the Sixth Circuit

did not decide an important question of federal law that has never

been addressed by this Court. Petitioners are essentially

dissatisfied that the judgment of the court below was unfavorable

to them.

Finally, although not framed as one of the issues, Petitioners

do claim a conflict between the circuit courts of appeal. As

demonstrated herein, no such conflict exists.

10

REASONS FOR DENYING THE WRIT

I,

THE UNITED STATES COURT OF APPEALS FOR

THE SIXTH CIRCUIT PROPERLY APPLIED THIS

COURT’S DECISIONS IN SONY CORP. OF AMERICA V.

UNIVERSAL CITY STUDIOS, INC., 464 U.S. 417 (1984)

AND IN HARPER & ROW PUBLISHERS, INC. V. NATION

ENTERPRISES, 471 U.S. 539 (1985) IN DECIDING THIS

CASE.

A. Sixth Circuit’s Application of Precedent

Petitioners argue that the court below did not properly apply

this Court’s decisions in Sony Corp. of America v. Universal City

Studios, Inc., 464 U.S. 417 (1984) and in Harper & Row

Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985).

Petitioners are wrong. The Court of Appeals for the Sixth Circuit

quoted from and properly applied the analysis from those cases.

The fact that Petitioners are not pleased with the result of that

analysis is not equivalent to a misapplication of those opinions.

The Sixth Circuit held:

The use of a copyrighted work primarily for

commercial purposes has been held by the

Supreme Court to be presumptively unfair.

Sony Corp., 464 U.S. 417, 449 (1984). ...

“While commercial motivation and fair use can

exist side by side, the court may consider

whether the alleged infringing use was

primarily for public benefit or for private

commercial gain.” MCA, Inc. v. Wilson, 677

F.2d 180, 182 (2d Cir. 1981). The Supreme

Court explained that “[t]he crux of the profit/

11

nonprofit distinction is not whether the sole

motive of the use is monetary gain, but whether

the user stands to profit from exploitation of the

copyrighted material without paying the

Harper & Row, 471 U.S. at 562. App. 12a.

Petitioners do not explain how the Sixth Circuit misapplied

this doctrine. In fact, both the trial court and the Sixth Circuit found

that Petitioners’ primary goal in releasing the record was to sell its

music. App. 12a; 754 F. Supp. at 1154. Contrary to the implication

in the Petition, the Sixth Circuit specifically stated that the

commercial purpose itself was not controlling on the issue of fair

use. App. 12a. The Sixth Circuit properly applied the presumption

that a commercial use is unfair and looked for rebuttal of that

presumption:

Therefore, in analyzing the purpose and

character of 2 Live Crew's use of the

copyrighted song, the facts in the record

require that-we start from the position that the

use is unfair. We are asked to then consider

whether 2 Live Crew met its burden to rebut the

App. 13a.

Petitioners may not like the Sixth Circuit's judgment, but it is

undisputed that the purpose and character of Petitioners’

derivative work were commercial. App. 12a: R. 25: Memorandum

Opinion at 6. Acommercial use “is presumptively . . . unfair” and

“tends to weigh against a finding of fair use.” Sony Corp., 464 U.S.

at 451; Harper & Row, 471 U.S. at 562. In addition, the finding of a

commercial use raises a presumption that the fourth factor, effect

12

on the potential market, will also weigh against fair use. Sony, 464

U.S. at 451. Here, Petitioners could not rebut the presumption.

. Many commentators have suggested an economic model for a

fair use privilege. See Harper & Row, 471 U.S. 539, 566 n. 9 (1985)

(collecting articles and noting that economic analysis led to correct

result). If the use is one by which a profit can be made, then the

copyright owner should keep that profit. A decision by a rational

copyright owner not to seek a profit is driven by the conclusion that

greater reward is possible by forgoing the use. See Goldstein v.

California, 412 U.S. 546, 549 (1973) (part of the reward is control

over use).

In addition, this Court has noted with approval the economic

theory that a fair use privilege should not be applied if there is a

functioning market for the use. Harper & Row, 471 U.S. at 566. See

Sanders and Gordon, Stranger in Parodies: Weird Al and the Law

of Musical Satire, | Fordham Ent., Media & Intell. Prop. L. F. 11

(1990) (there is a functioning market for parody uses).

At one point, Petitioners assert that the instant case is

distinguishable from Harper & Row and Sony because neither of

those cases involved “creative derivative works” and this Court

should therefore grant review. This argument is not persuasive on

the issue of whether certiorari should be granted for two reasons.

First, whether this case is factually distinguishable from Harper &

Row and Sony is not an issue meriting this Court's review where the

legal issues are the same. Moreover, the infringing work in Harper

& Row, a magazine article based on a book, was a derivative work

as that term is used in the Copyright Act. See 17 U.S.C. § 101.

_ Petitioners simply do not explain how the Sixth Circuit

“misapplied” this Court’s precedent, other than a bare assertion

that the lower court “misapplied” and “strengthened” the

presumption that commercial uses are unfair. Petition at 9.

13

Petitioners do not and, indeed, cannot argue that their work was not

for commercial purposes. Moreover, they do not and cannot argue

that the Sixth Circuit converted the presumption into an

“irrebuttable” one. Instead, Petitioners assert that the opinion

below “implies if it does not directly state that prior Second and

Ninth Circuit precedent has been overruled” by the decisions in

Sony and Harper & Row. As demonstrated below, there is no

conflict between the circuit courts of appeal regarding the

application of the presumption.

Second, assuming arguendo, that there are significant factual

distinctions between Sony and Harper & Row and the instant case,

those distinctions are without a legal difference.’ This Court’s

holdings regarding the proper interpretation of the four fair use

factors contained in 17 U.S.C. § 107 are clear, and this Court

should not be expected or required to reaffirm those holdings for

every different possible, different, factual scenario or category of

fair use. Petitioners would turn this Court into a court of original

jurisdiction, forcing it to consider the application of settled law to

various factual scenarios. The Petition should be denied.

B. Conflict Between The Circuits

Petitioners assert that the Sixth Circuit is at odds with the

courts of appeal for the Second and Ninth Circuits because the

Sixth Circuit’s opinion in this case “effectively holds that

commercial musical parody of a copyrighted work is a

misappropriation of the copyrighted work.” Petition at 8. To the

contrary, the Sixth Circuit explicitly held that “[c)ommercial

purpose is not itself controlling on the issue of fair use. . . .” App.

12a. Petitioners have misstated the holding below.

5. Indeed, Petitioners cited Harper & Row as authority to the Sixth Circuit

in their brief. Appellees’ Brief to Sixth Circuit at 16 and 39.

14

Furthermore, without quotation or citation of the opinion,

Petitioners contend that the decision below “outlaws” musical

parody. Petition at 9. Moreover, the Petition implies that all

“parodies” have always been considered fair uses, especially in the

Second and Ninth Circuits. That is manifestly not the case. See,

e.g., New Line Cinema Corp. v. Berilesman Music Group, Inc., 693

F. Supp. 1517, 1530 (S.D.N.Y. 1988); Walt Disney Productions v.

Air Pirates, 581 F.2d 751 (9th Cir. 1978); Rogers v. Koons, 960

F.2d 301 (2d Cir. 1992). The Sixth Circuit acknowledged the place

of parody in entertainment but correctly refused to indulge the

Petitioners’ suggested rewriting of § 107. “Much of entertainment

involves parodies in the popular sense, but section 107 does not

direct the courts to conclude that all such parodies are fair uses.”

App. 10a.

Petitioners also argue that the decision of the Sixth Circuit is

inconsistent with specific decisions of the Second and Ninth

Circuit Courts of Appeal, citing, Berlin v. EC Publications, Inc.,

329 F.2d 541 (2d Cir. 1964); Fisher v. Dees, 794 F.2d 432 (9th Cir.

1986); and Elsmere Music Inc. v. National Broadcasting Co., 623

F.2d 252 (2d Cir. 1980). Petition at 8. This is not the case and to the

extent that Petitioners imply that “musical parody” is entitled to or

somehow receives special treatment from those circuits, the

Petition is incorrect.®

6. Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986) expanded the amount of

permissible copying when a privilege is sought for unlicensed parody from the

“recall or conjure up” test to a “necessary to accomplish reasonably its parodic

purpose” test. 794 F.2d 432, 439. Fisher based its analysis of substantiality on a

footnote in the Second Circuit's opinion in Elsmere Music. Id. (citing Elsmere

Music, Inc. v. National Broadcasting Co., 623 F.2d 252, 253 n. 1 (2d Cir. 1980)).

The footnote was pure dicta, hypothesizing that the “recall or conjure up” test

established in Berlin v. EC Publications, Inc., 329 F.2d 541 (2d Cir. 1964), could

be too restrictive in some cases.

The Second Circuit repudiated its Elsmere speculation in Warner Bros. Inc.

(Cont'd)

15

Petitioners contend that Sony and Harper & Row “overrule”

certain cases from the Second and Ninth Circuits. However, Fisher

was decided the year after Harper & Row and two years after Sony.

It goes without saying that cases decided first cannot overrule later

decisions. Furthermore, if the courts of appeal for those circuits

believed that their decisions had been overruled, surely there

would have been some discussion of that in the cases decided since

Sony and Harper & Row, especially where Sony is cited. To the

contrary, in Rogers v. Koons, 960 F.2d 301, 309 (2d Cir. 1992), the

court made practically the identical analysis that the Sixth Circuit

made, without mentioning that Sony and Harper & Row

“overruled” its past cases. See also, Brewer v. Hustler Magazine,

Inc., 749 F.2d 527, 529 (9th Cir. 1984) (since use was of

commercial nature, harm to [plaintiff] could be presumed, citing

Sony).

(Cont'd)

v. American Broadcasting, Inc., 654 F.2d 204 (2d Cir. 1981). In that case, the

Second Circuit directed the district court to allow a narrower scope of similarity

in a parody case than the district court had posited. On preliminary injunction

hearing, the district court found no substantial similarity between Superman and

the Greatest American Hero. Warner Bros, Inc. v. American Broadcasting, Inc.,

$23 F. Supp. 611 (S.D.N.Y. 1981). However, the district court went on to note

that even if the similarity was later proved to be substantial rather than isolated, a

parody defense might still be available.

The Second Circuit affirmed the denial of a preliminary injunction based

on a lack of likelihood of success on the merits but “believe(d) it prudent to note

our reservations in connection with . . . [the] discussion of the parody defense.”

654 F.2d at 211. The Second Circuit found that a privilege “might be applicable”

to a case involving isolated direct copying but expressed doubt about the

propriety of the privilege when an entire work was permeated with copying and

the same media were involved. 654 F.2d at 211.

The further implication that the law regarding fair use has a smooth and

uninterrupted legal history is obviously far from correct.

16

Finally, at its most basic, Petitioners’ argument is that because

some other cases involving musical parody have been determined

to be fair uses, the Petitioners’ use in this case should be excused

under § 107. It is simply does not follow that all musical parodies

are fair uses, or that any decision from another circuit finding a

musical parody to be an unfair use is “in conflict” as that term is

used in Rule 10.1(a). “Nor will differences between two circuits

likely be accepted as a sufficient conflict ‘if they can fairly be

accounted for on the basis of variations in the factual situations

among the cases involved.’” 12 J. Moore, Moore's Federal

Practice { 810.21 (2d ed. 1981) quoting Harlan, Manning the

Dikes, 13 Record of N.Y.C. Bar Ass’n 541, 551 (1958). Petitioners

are confusing legal standards with the application of the law to the

facts of a particular case.

The opinion below reaffirmed the exclusive rights granted to a

copyright owner under § 106 of the Copyright Act. The opinion

does not “outlaw” musical parody and is not at odds with decisions

from either the Second or Ninth Circuits. In fact, the Sixth Circuit

cites decisions from both of those circuits as support for its opinion

— including Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986); Walt

Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978);

Elsmere Music v. National Broadcasting Co., 623 F.2d 252 (2d Cir.

1980); Salinger v. Random House, 811 F.2d 90 (2d Cir. 1987);

Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992). The opinion below

properly applied the presumption enunciated by this Court in Sony

and reaffirmed in Harper & Row. The fact that the presumption

worked against Petitioners is not a basis for this Court to review the

case.

17

Il.

THE APPLICATION OF RULE 301 OF THE FEDERAL

RULES OF EVIDENCE IS NEITHER PROPERLY

BEFORE THIS C( JRT NOR RELEVANT TO THIS CASE.

Petitioners argue that the Sixth Circuit has ignored or

Rule 301 of the Federal Rules of Evidence. This

argument fails to merit a grant of certiorari on both procedural and

substantive grounds. Initially, this argument is not properly before

this Court. Rule 301 of the Federal Rules of Evidence was never

before mentioned in this action, either to the trial court or to the

court of appeals. Ordinarily, the Supreme Court does not decide

questions not raised or resolved in the lower court. Youakim v.

Miller, 425 U.S. 231, 233-34 (1976).

Further, substantively this issue does not merit Supreme Court

review under the dictates of Rule 10.1 of the Rules of the Supreme

Court. Petitioners’ second argument is indistinguishable from their

first — Petitioners disagree with the effect of the Sixth Circuit's

application of the presumption that commercial use is unfair.

Petitioners claim that the Sixth Circuit has [implicitly] rejected

Rule 301 of the Federal Rules of Evidence, and has thereby created

an irrebuttable presumption in cases such as this. Even a cursory

reading of the opinion shows that this is not the case. The Sixth

Circuit cited the presumption from Sony and applied it in this case.

App. 12a-13a. Far from creating an irrebuttable presumption of

unfair use, the court specifically acknowledged that the

presumption could be overcome and suggested the means for the

presumption to be overcome.

Therefore, in analyzing the purpose and

character of 2 Live Crew’s use of the

copyrighted song, the facts in the record

require that we start from the position that the

18

use is unfair. We are asked to then consider

whether 2 Live Crew met its burden to rebut the

presumption by a defense, we note, requiring

the court to be convinced that the “parody does

not unfairly diminish the economic value of the

original.”

App. 13a citing Fisher v. Dees, 794 F.2d 432, 437 (9th Cir. 1986).

Obviously, the court below has not created an irrebuttable

presumption in conflict with the Rules of Evidence. This argument

does not justify review by this Court.

THE COMMERCIAL PURPOSE OF A DERIVATIVE

WORK WEIGHS AGAINST A FINDING THAT THE USE

OF THE UNDERLYING COPYRIGHTED WORK IS FAIR.

Petitioners recast the presumption argument a third time, this

time in the form of a suggestion that a new factor be considered in

fair use determinations. Petition at 16-20. Petitioners urge this

Court to provide parody special consideration over and above the

statutory fair use considerations. Acuff-Rose does not dispute that

Congress has authorized, and occasionally courts have considered,

factors other than the four mandated for consideration by 17 U.S.C.

§ 107. See Harper & Row at 560.

However, the new consideration suggested by Petitioners is

one neither worthy of nor properly presented for this Court's

attention. Once again, this issue was not presented to the Sixth

Circuit or to the trial court. Ordinarily, the Supreme Court does not

decide questions not raised or resolved in the lower court. Youakim

v. Miller, 425 U.S. 231, 233-34 (1976).

19

Additionally, this Court should reject this invitation to

legislate judicially a new category of protection under 17 U.S.C.

§ 107.’ Petitioners argue that their work is protected parody and

put their work on a par with other examples of parody in American

and British literary and musical history, apparently under the

mistaken impression that none of these other works would be

permissible under the Sixth Circuit’s analysis. The Sixth Circuit

decision does not support such a tortured reading. The Sixth

Circuit merely applied the presumption and held that the

Petitioners had not overcome it under the facts of this case.

Apparently, Petitioners would rewrite the statute so that the

initial presumption that a commercial derivative work is unfair can

be overcome by a simple assertion that the derivative work is “a

parody.” Proper parody in the legal sense’ is already the

beneficiary of extra protection under the Copyright Act. Congress

provided that protection in the fair use section — 17 U.S.C. § 107.

Petitioners do not explain why parody, as a distinct category, is

deserving of even more protection. Significantly, Petitioners do

not point to any other class of work that receives any “heightened”

protection under § 107. Congress has provided significant and

sufficient protection for parody in that section of the Copyright

Act. That Petitioners produced a work that goes beyond the

parameters of this protection does not mean this Court should

review this case. :

The issue of the application of the fair use factors is not an

“important question of federal law which has not been, but should

be, settled by this Court.” On two recent occasions, in Sony and

7. Parody, as such, is not one of the specific examples of fair use listed in

§ 107. It has arisen under the privileges granted for criticism and comment and

from the legislative history. App. 9a-10a.

8. See footnote 3, supra.

20

Harper & Row, this Court has specifically discussed the issue of

how the first of the four fair use factors should be analyzed and

applied. There is nothing to be gained by revisiting the issue.’ The

Sixth Circuit’s opinion makes clear that the presumption can be

overcome within the framework established by the Congress, as

analyzed in opinions of this Court.

The standards established by this Court on the fair use issue

are clear. The various courts of appeal have applied those

standards. See, e.g., Rogers v. Koons at 309. This issue is settled.

Certiorari should be denied.

IV.

CONSIDERATION OF THE EFFECT ON THE

POTENTIAL MARKET FOR OR VALUE OF A

COPYRIGHTED WORK IS PROPER TO DETERMINE

WHETHER A PARTICULAR USE OF A COPYRIGHTED

WORK IS FAIR.

In criticizing the Sixth Circuit’s market analysis of the fourth

fair use factor, the effect of the use upon the potential market for or

value of the copyrighted work, Petitioners focus almost

exclusively on the unlikelihood that Petitioner’s “Pretty Woman”

would fulfill the demand for Acuff-Rose’s “Oh, Pretty Woman.”

Simply put, Petitioners are asserting that because Acuff-Rose has

not made or has not licensed a parody of “Oh, Pretty Woman” in

9. Petitioners’ argument on this issue is rife with speculation and materials

that are not in the record. For example, whether other groups creating “parodies”

seek permission is not in the record, except for a reference to “Weird Al”

Yankovic, made by Petitioners in their letter to Acuff-Rose. In point of fact, Mr.

Yankovic does seek and receives permission to perform parodies of popular

works. See footnote 2, supra. Petitioners imply that the nature of their work

precluded the grant of permission. There is no evidence in the record on this

point.

21

competition with Petitioners’ “Pretty Woman,” somehow Acuff-

Rose’s market has not been damaged. Petitioners further speculate

that Acuff-Rose “had no reasonable expectation of developing a

parody which criticized and mocked this time-honored rock-n-roll

ballad.” Petition at 21.

What Petitioners fail to acknowledge is that analysis under the

fourth fair use factor is not limited solely to a “fulfills the demand”

or substitution standard. Rather, the analysis includes a complete

examination of the potential harm to the market for or value of the

original copyrighted work, engendered by the claimed fair use.

The Court of Appeals for the Sixth Circuit, citing this Court’s

decision in Sony, correctly observed:

Actual present harm need not be shown; such a

requirement would leave the copyright holder

with no defense against predictable damage.

Nor is it necessary to show with certainty that

future harm wil! result. What is necessary is a

showing by a preponderance of the evidence

that some meaningful likelihood of future harm

exists. If the intended use is for commercial

gain, that likelihood may be presumed.

App. at 16a, citing Sony, 464 U.S. at 451.

Petitioners’ reliance upon the “fulfills the demand” or

substitution standard is misplaced. In Harper & Row this Court

held:

More important, to negate fair use one need

only show that if the challenged use “should

becoine widespread, it would adversely affect

the potential market for the copyrighted work.”

22

Harper & Row, 471 U.S. at 569. The Court of Appeals for the Sixth

Circuit properly applied the direction of this Court, stating that the

“focus is on potential harm. . . .” App. at 16a.

Moreover, Petitioners attempt to bolster their position on the

market effect by claiming that the Court of Appeals for the Sixth

Circuit’s decision is inconsistent with the analysis used in Fisher v.

Dees, 794 F.2d 432 (9th Cir. 1986). The Fisher court did limit its

analysis to a “fulfills the demand” or substitution standard.

However, in Hustler Magazine Inc. v. Moral Majority, Inc., 796

F.2d 1148 (9th Cir. 1986) which was decided approximately a

month after Fisher, the Ninth Circuit returned to the full statement

of effect on the potential market, including the market to license

derivative works, such as parodies. Hustler Magazine, Inc., 796

F.2d at 1155-56.

Additionally, this Court has warned on more than one

occasion that the analysis under the fourth fair use factor “must

take account not only of harm to the original but also of harm to the

market for derivative works.” Harper & Row, 471 U.S. at 566. The

Court of Appeals for the Sixth Circuit properly applied this Court's

mandate, stating that:

[a]lthough we have already determined that

harm for purposes of the fair use analysis has _

been established by the presumption attaching

to commercial uses, we note that the inquiry

under the fourth statutory factor not only

considers harm to the market for the origina!

but harm to the market for derivative works as

well.

App. at 17a.

23

After citing an example from Rogers v. Koons, where the

Court of Appeals for the Second Circuit examined the effect of a

motion picture on the potential sale of adaptation rights for a book,

the Sixth Circuit, in this case, dismissed as irrelevant the

conclusion that “it is unlikely that 2 Live Crew's song could

adversely affect the market for the original.” The Sixth Circuit,

after applying this Court’s directives, properly concluded that “the

— on this factor does not support a finding of fair use.” App.

a.

The various courts of appeal are in agreement and have

followed Congress’ statutory formulatioa of the fourth of the fair

use factors. Contrary to Petitioners’ position, this consideration is

not limited to market substitution. No reason exists for this Court

to reaffirm what Congress and the courts of appeal have clearly and

consistently acknowledged. The Petition should be denied.

24

CONCLUSION

Wherefore, based on the foregoing, the Respondent, Acuff-

Rose Music, Inc., respectfully requests that this Court deny the

Petition for Writ of Certiorari.

Respectfully submitted,

R. EDDIE WAYLAND

Counsel of Record

NORA T. CANNON

F. CASEY DEL CASINO

E. ANDREW NORWOOD

KING & BALLOW

Attorneys for Respondent

1200 Noel Place

200 Fourth Avenue North

Nashville, TN 37219

(615) 259-3456