Petition for Writ of Certiorari — Koons v. Rogers

Bupreme Court, U.S. |

(92-297

: . FILED |

scan AUG 1.4 1992 |

IN THE OFFICE OF THE CLERK |

Sigprenwe Court of the United States

OCTOBER TERM, 1992

ART ROGERS and SONNABEND GALLERY. IN¢

Petition fora Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

PETITION FOR A WRIT OF CERTIORARI

JOHN B. KOEGEI

138 Spring Street

New York, New York 10012

(212) 226-7744

PAUL M. SMITH

KLEIN, FARR, SMITH & TARANTO

2550 M Street, N.W.——Suite 350

Washington, D.C. 20037

(202) 775-0184

v | > 4/3

Counsel for Pr one)

“Counsel of Record

WILSON - EPes PRINTING Co., INC. - 789-0096 - Was B.* 20001

QUESTIONS PRESENTED

1. Whether a work of art that would otherwise qualify

for the copyright defense of “fair use’ becomes a form

of actionable commercial exploitation simply because its

creator was paid for that work.

2. Whether an artist who imitates but transforms a

prior work in order to criticize what it represents may

be held liable for copyright infringement simply because

the two works are superficially similar and the prior

work is not sufficiently well known to be a recognizable

object of the critique.

(i)

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED .............0........0.000000000......... : i

TABLE OF AUTHORITIES .... a i iv

OPINIONS BELOW .................... Midiaaiadtiaatsbeonsaiasamaioads 1

JURISDICTION ....... SP ARAL ACE ee, a eee 1

ype balay 95. at A's} | pe Ar 2

STATEMENT ..... a 2

REASONS FOR GRANTING THE WRIT................. 6

I. THE RULING BELOW RAISES ISSUES OF

CRITICAL IMPORTANCE TO THE PROPER

ADMINISTRATION OF THE COPYRIGHT

eee eee ee EER 9

Il. THIS CASE MERITS REVIEW BY THIS

COURT ........ Kino LATE A ID gal Oe IE TE 20

DER a cl 24

(ill)

lv

TABLE OF AUTHORITIES

Cases Page

Acuff-Rose Music, Inc. v. Campbell, 754 F. Supp.

1150 (M.D. Tenn.), app. dismissed, 929 F.2d

ee ee ts < advected ee 19

Aliotti v.-R. Dakin & Co., 831 F.2d 898 (9th Cir.

1987) ee eS eae ECE See ET. Panes 15

Association of American Medical Colleges v.

Mikaelan, 571 F. Supp. 144 (E.D. Pa. 1983),

aff'd per curiam, 734 F.2d 3 (3d Cir. 1934) _...... 12

Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d

Cir.), cert. denied, 379 U.S. 822 (1964) _............. 14,18

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

109 S. Ct. 971 (1989) .......00000...... Redage cence ae 9

Brewer v. Hustler Magazine, Inc., 749 F.2d 527

UN is ED oon a ee ee pee 12

Elsmere Music, Inc. v. National Broadcasting Co.,

GZS F.20 252 (20 Cir. 1960) ...............-......<--0......... 20

Elsmere Music, Inc. v. National Broadcasting Ce..,

482 F. Supp. 741 (S.D.N.Y.), aff’d on opinion

below, 623 F.2d 252 (2d Cir. 1980) ....................... 16

Feist Publications, Inc. v. Rural Tel. Serv. Co.,

Lee ae Se ee Oe eet 9

Fisher v. Dees, 794 F.2d 482 (9th Cir. 1986) ....19, 20, 23

Folsom v. Marsh, 9 Fed. Cas. 342 (C.C.D. Mass.

EE aici occas se sea crts eA bite egies 20

Haberman v. Hustler Magazine, Inc., 626 F. Supp.

201 (D. Mass. 1986) _...... . iccses Ga ae

Harper & Row, Publishers, Inc. v. Nation Enters.

471 U.S. 5389 (1985) ............. 10, 11, 13, 16

Hustler Magazine, Inc. v. Moral Majority, Inc.,

796 F.2d 1148 (9th Cir. 1986) ... “ 12

Iowa State Univ. Research Found., Inc. v. Ameri-

can Broadcasting Cos., 621 F.2d 57 (2d Cir.

RO cas san cciceeeneeiceee hee cesceui eed eiemserer ves 9,12

Maxtone-Graham v. Burtchuaell, 803 F.2d 1253 (2d

Cir. 1986), cert. denied, 481 U.S. 1059 (1987) _.. 12

MCA, Inc. v. Wilson, 677 F.2d 180 (2d Cir.

. | RRR ARA NAO Naren EGE le eL TERE SSUES DES NUAhted: PRE ee ee)

New Era Publications Int’l ApS v. Carol Publish-

ing Group, 904 F.2d 152 (2d Cir.), cert. denied,

ee ee ee I I ois reac scarce ences 12

V

TABLE OF AUTHORITIES—Continued

Page

Rosemont Enters., Inc. v. Random House, Inc.,

266 F.2d 303 (2d Cir. 1966), cert. denied, 385

tea! Be); 2 een er 12

Sony Corp. of America v. Universal City Studios,

Inc., 464 U.S. 417 (1984) . — 2 a passim

Stewart v. Abend, 110 S. Ct. 1750 (1990) ............... 7,11

United States v. Paramount Pictures, Inc., 334 U.S.

BOD CIDER) cain cviiereneerciet goes 10

Walt Disney Productions vy. Air Pirates, 581 F.2d

751 (9th Cir. 1978), cert. denied, 439 U.S. 1132

PROUD ssccctaxenciovsess PLN eR ee 16

Warner Bros. v. American Broadcasting Cos., 654

P28 304 (26 Cir. TOR) scien 18

Statutes

OF TES BF i cscs ss ceccdcaeciaan passim

Other Authorities

H.H. Arnason, The History of Modern Art (3d ed.

1986) 3

M. Brenson, Art: Whitney Biennial’s New Look,

N.Y. Times, Ape. 10; FEST - cisccnmen ean 3

M. Buskirk, “Appropriation Under the Gun,’ ’ Art

in America (June 1992)................--..-.--------------- 22

Gibson, “Decade in Review,” Sculpture, May June

1989 . Ain Se ee eer ae 3

3 M. Nimmer & ‘D. ‘Nimmer, Nimmer on Copy-

right ....... a oe ee passim

C. Owens, “The Allegorical Impulse: ‘Toward a

Theory of Postmodernism,” in Art After Mod-

ernism (B. Wallis ed. 1989) . PRUE Bee 608 3

R. Posner, Law and Literature: A Misunderstood

Relation (1988) . Bothy 15,18

K. Varnedoe & A. Gopnik, ‘High & Low: ~ Modern

Art/Popular Culture (1990) ake aye oat ‘s 3,4

IN THE

Suprenve Court of the United States

OCTOBER TERM, 1992

JEFF KOONS,

" Petitioner,

ART ROGERS and SONNABEND GALLERY, INC.,

Respondents.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

PETITION FOR A WRIT OF CERTIORARI

Petitioner Jeff Koons seeks review of a decision of

the United States Court of Appeals for the Second Cir-

cuit holding that a fine-art sculpture created by him in-

fringed the copyright in a photograph previously pub-

lished as a notecard by respondent Art Rogers.

OPINIONS BELOW

The opinion of the United States Court of Appeals for

the Second Circuit is reported at 960 F.2d 301, and re-

printed at Pet. App. la. The opinions of the United

States District Court tor the Southern District of New

York are reported at 751 I. Supp. 474 and 777 F. Supp.

1 and reprinted at Pet. App. 25a and 41a.

JURISDICTION

a >

1992, and denied a timely petition for rehearing on

e

The Court of Appeals entered judgment on April 2

2

May 18, 1992. The jurisdiction of this Court is invoked

pursuant to 28 U.S.C. § 1254(1).

STATUTES INVOLVED

Section 107 of title 17 of the United States Code pro-

vides as follows:

Notwithstanding the provisions of sections 106 and

106A, the fair use of a copyrighted work, including

such use by reproduction in copies or phonorecords

or by any other means specified by that section, for

purposes such as criticism, comment, news reporting,

teaching {including multiple copies for classroom

use), scholarship, or research, is not an infringement

of copyright. In determining whether the use made

of a work in any particular case is a fair use the

factors to be considered shall include—

(1) the purpose and character of the use, includ-

ing whether such use is of a commercial nature or is

for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion

used in rejation to the copyrighted work as a whole;

and

(4) the effect of the use upon the potential market

for or value of the copyrighted work.

STATEMENT

This case involves a copyright infringement claim

brought by respondent Art Rogers, a professional photog-

rapher who in 1980 was commissioned to shoot a black-

and-white portrait of two people holding eight puppies.

In 1984, Rogers licensed the publication of this photo-

graph on notecards distributed to stores around the coun-

try. Petitioner Jeff Koons is a prominent artist and

sculptor who in 1988 created a large, brightly colored

sculpture entitled String of Puppies. This sculpture was

modeled to a considerable extent on the figures in the

3

notecard. It was initially exhibited at the Sonnabend

Gallery in New York as part of a body of 20 sculptural

works under the title “Banality Show.”

Like the other art works that Koons produced for this

exhibition, String of Puppies was intended in part as a

criticism of a commercial, mass-produced image from

popular culture. As the Second Circuit recognized, peti-

tioner “works in an art tradition dating back to the

beginning of the twentieth century,” Pet. App. 4a—a

tradition characterized by use of commonplace images or

objects in the creation of new works. Many contemporary

artists, sometimes referred to as ‘“post-modernists,” “draw

upon the artistic movements of Cubism and Dadaism,

with particular influence attributed to Marcel Duchamp,

who in 1913 became the first to incorporate manufac-

tured objects (readymades) into a work of art.” Jd. at

15a. They typically incorporate “images into works of

art to comment critically both on the incorporated object

and the political and economic system that created it.”

Id. In this process, “the meaning of the original object

[is] extracted and an entirely new meaning set in place.”

Id. at 4a.! One well-known example is the work of Andy

Warhol. Jeff Koons is recognized as one of the most im-

portant contemporary visual artists in this tradition.”

1 See C. Owens, “The Allegorical Impulse: Toward a Theory of

Postmodernism,” in Art After Modernism 205 (B. Wallis ed. 1989)

(“The appropriated image may be a film still, a photograph, a draw-

ing; it is often itself already a reproduction. However, the manipu-

lations to which these artists subject images work to empty them

of their resonance, their significance, their authoritative claim to

meaning.”). See generally H.H. Arnason, The History of Modern

Art 635-91 (3d ed. 1986); K. Varnedoe & A. Gopnik, High & Low:

Modern Art/Popular Culture 369-403 (1990).

2 See Gibson, “Decade in Review,” Sculpture, May/June 1989, at 23

(“Koons’ kitchen-objects represent the climax of the so-called Simu-

lationist movement, in which artists make and exhibit works of art

based on real-world commodities to draw attention to, and criticize,

what they view as the excessively commercial character of the art

market.”) ; M. Brenson, Art: Whitney Biennial’s New Look, N.Y.

Times, Apr. 10, 1987 at C24 (“Mr. Koons has formulated one of the

i ii

1

Thus, in making String of Puppies, petitioner in-

structed the artisans assisting him to recreate in sculp-

tural form various features of the Rogers notecard be-

cause his goal was to reproduce what he considered a

typical example of popular culture. But Koons also

sought to transform the notecard image in order to make

his own radically different artistic statement. This trans-

formation included a number of very significant changes

—using the sculptural medium and a larger-than-life

scale, adding vivid painting (especially the blue on the

dogs), adding daisies to the hair of the two people and

exaggerating their facial expressions for a vacuous effect,

and placing a bulbous nose on each puppy.’ As a result

of these changes, the overall aesthetic effect of the sculp-

ture is quite distinctive. The notecard presents a scene

that the court below described as “charming”, Pet. App.

lla, while Koons’ sculpture is highly disturbing. As

petitioner put it, his goal was to take “the sculpture out

of the realm of reality into the realm of unreality but

without eliminating a sense of believability.” CA Jt. App.

at 789." He felt that he had “stripped away entirely the

personality of the notecard picture and substituted [his]

own values and [his] own message.” /d. at 791.

In keeping with Koons’ general practice, only three edi-

tion copies of the sculpture exist.. No further copies were

most jaded and puritanical statements made by an artist about

consumer culture.’’).

3 Photographs from the record showing the notecard, a frontal

view of the Koons sculpture, and the sculpture displayed as part

of the larger Banality show are reproduced in the appendix to this

petition at pages 48a, 49a & 50a.

* See also K. Varnedoe & A. Gopnik, Supra, at 396 (describing the

“Banality” show) (“Koons’s figurines were shocking because of the

way they looked. They were nightmarish—devil dolls. in which the

insipid language of the cartoons’ over-accentuated contours ‘and

biscuit glazes was suddenly made hard and staring.’’).

6 An initial proof, traditionally known as an “artist proof,” was

- kept by Koons as a personal record of his work and was not made

available for purchase.

ever intended (and New York law would forbid further

copies). All three edition works were purchased by col-

lectors for a total of $367,000. Respondent’s complaint,

filed in 1989 in the U.S. District Court for the Southern

District of New York, claimed copyright infringement

and unfair competition under the Lanham Act and state

law. On December 10, 1990, the district court granted

respondent’s motion for summary judgment on the issue

of copyright infringement. Pet. App. 40a. It held that

the photograph and the sculpture are “substantially sim-

ilar,” and rejected the asserted defense of “fair use’ as

a matter of law.°

On appeal, the United States Court of Appeals for the

Second Circuit affirmed. It agreed that the two works

are substantially similar, adopting an approach that asked

only whether elements of the works are recognizably sim-

ilar without taking into account their overall differences

in terms of aesthetic appeal or message. Pet. App. 10a.

With respect to the issue of “fair use,” the Second Circuit

referred to each of the four factors set out in the statute.

17 U.S.C. $107. Disregarding Koons’ own affidavit, it

held, first, that the “purpose” of Koons’ sculpture was

primarily for profit and thus exploitive. Pet. App. 14a.

In so doing, it relied on the fact that collectors had paid

high prices for the sculpture. The court flatly rejected as

inapplicable the statutory concepts of “criticism” or “‘com-

ment.” Jd. It also refused to consider the sculpture as a

form of “parody,” construing this term to apply only

where the original work is sufficiently well known that it

6 The court held that the question of damages presented disputed

issues requiring a trial. It also ruled, however, that Rogers should

receive the artist’s proof of the s« ulpture, even though Koons had

never offered it for sale. Believing that any actual turnover of his

artist’s proof would not be required until the end of the case, Koons

loaned it to a museum in Germany for a temporary exhibition, The

district court held him in contempt and ordered the proof returned

to Koons’ warehouse in New York. This aspect of the case is not

raised in the instant petition.

i

6

will be recognized as the object of the parody by viewers

of the later work. 7d. at 16a.

Turning to the second and third factors, the court of

appeals then held that the creative and imaginative “na-

ture” of the photograph militated against a finding of

fair use, and that the “amount and substantiality” of the

copying done by Koons was greater than would have been

permitted even in a true parody case. Jd. at 17a. Finally,

the court of appeals ruled that there was no possible

dispute with respect to the fourth fair-use factor, the

“effect of the use on the potential market for or value of

the copyrighted work.” Here, petitioner had argued that

the two works appealed to entirely different audiences and

that the record contained no evidence establishing even

a meaningful possibility (much less a likelihood) of mar-

ket injury. The court, however, invoked a presumption

of market injury based on its prior conclusion that peti-

tioner’s work was “primarily commercial in nature.” Jd.

at 20a (citing Sony Corp. of America v. Universal City

Studios, 464 U.S. 417, 451 (1984)). Applying this pre-

sumption, it concluded that it was “obviously not implaus-

ible” that the sculpture could interfere with a sale by

respondent of the right to produce a derivative sculpture

based on the photograph, Pet. App. 20a,” even though a

true derivative would convey the “charming” message of

the Rogers photograph, while Koons’ “horrific” sculpture

did not do so.

REASONS FOR GRANTING THE WRIT

The central issue in this case is what standards a court

should apply when a plaintiff in an infringement action

seeks to rebut a “fair use” defense by labelling the de-

fendant’s work “commercial” and thus exploitive. As the

Second Circuit’s decision illustrates, application of proper

* The court also unjustifiably speculated that Koons might sell

photographs of his sculpture, thereby limiting “Rogers’ potential

market for the sale of the notecards, in addition to any other

derivative use he might plan.” Pet. App. 20a.

_

(

standards to resolve the question of commerciality is

critical, because a court’s characterization of a challenged

work as commercially exploitive automatically leads to a

finding of liability for infringement. At the same time,

that decision demonstrates the need for clarification of

the applicable standards—both in fair-use cases generally

and in the specific context of cases involving works of

parody or satire. In the absence of such guidance, the

lower courts are producing inconsistent and unpredict-

able decisions, often demonstrating little awareness of the

basic principles that should distinguish actionable in-

fringement from fair use. Moreover, if left undisturbed,

the Second Circuit’s ruling will have a severe practical

impact, not only on artists like petitioner working in the

“nost-modern” tradition but also on other artists and

authors who may wish to “use” prior works in legitimate,

and often critical, ways.

While this Court has in recent years addressed various

aspects of fair use, it has not established clear rules for

applying the first factor set forth in the statute: “the

purpose and character of the use, including whether such

use is of a commercial nature.” 17 U.S.C. $107. The

need for such clear rules was greatly heightened when this

Court, in Sony Corp. of America v. Universal City

Studios, created new presumptions that commercial uses

are “unfair” and, more specifically, that any commercial

use causes market injury to the creator of the prior

work. 464 U.S. at 449, 451. After Sony, a court’s inquiry

into “commercial use” under the first fair-use factor has

become critical to a determination of market injury, the

“‘most important, and indeed, central’”’ factor in the

fair-use context. Stewart v. Abend, 110 S. Ct. 1750, 1769

(1990) (quoting 3 M. Nimmer & D. Nimmer, Nimmer on

Copyright § 18.05[A], at 18-102.4 (“Nimmer’”)). In-

deed, as this case illustrates, labelling a work as commer-

cial exploitation, when combined with the Sony presump-

tions, permits a court to bypass altogether a meaningful

separate inquiry into market injury.

8

This approach might not be a matter of serious con-

cern if the Second Cireuit had addressed the “commercial

use” question in a way that took into account the funda-

mental purpose of the fair-use privilege. This privilege is

designed to allow subsequent authors and artists to use

prior works in the creation of new ones that communicate

new and distinct messages and do not impinge on valid

commercial rights in the prior works. But the court

adopted reasoning that has littie or nothing to do with

this underlying purpose. It focused first on the fact that

petitioner was paid for his sculpture, even though that

fact is equally present in virtually every fair-use case,

It then ruled out characterization of the sculpture as a

form of social criticism or “parody” based on another

fact (the relative obscurity of the Rogers photograph )

that has no logical connection to the policies underlying

the fair-use defense.

The result was a ruling that ultimately makes no sense.

While Koons’ idiosyncratic sculpture certainly resembles

the Rogers “charming” photograph in a superficial way,

it also constitutes an independent act of expression about

the “banality” of those aspects of our culture typified by

the photograph. To suggest that the sculpture, with its

own distinctive message and audience, affected the mar-

ket for the photograph or for derivative works faithfully

based on the photograph is absurd. And it is equally ab-

surd to suggest that Koons selected the photograph as a

model in order to “exploit” the creativity of respondent.

That the Second Circuit could nevertheless find infringe-

ment as a matter of law in this case is, by itself, com-

pelling evidence of the need for action by this Court.

Copyright law strikes a “difficult balance” between two

goals: (1) safeguarding valid commercial rights of au-

thors and artists in order to encourage their expression

and (2) leaving ample room for additional creative efforts

by others. Sony Corp. of America v. Universal City

Studios, 464 U.S. at 429. The fair-use privilege helps to

os A ERE

9

strike this balance, by preventing “ ‘rigid application of

the copyright statute when ... it would stifle the very

creativity which that law is designed to foster.’ Stewart

vy. Abend, 110 S. Ct. at 1768 (quoting /owa State Jn.

Research Found. v. American Broadcasting Cos., 621 F.2d

57, 60 (2d Cir. 1980)). The Second Circuit’s almost

reflexive condemnation of petitioner’s work as commer-

cial exploitation—an approach that is, unfortunately, far

from unique—-demonstrates the need for review by this

Court in order to ensure that copyright law continues to

be a vehicle for encouraging, rather than suppressing,

desirable and legitimate forms of expression.

I. THE RULING BELOW RAISES ISSUES OF CRITI-

CAL IMPORTANCE TO THE PROPER ADMINIS-

TRATION OF THE COPYRIGHT LAWS.

1. The importance of this case reflects the central role

of the fair-use doctrine in establishing the proper scope

of copyright protection. Like any copyright case, this

one ultimately requires assessment of specific facts relat-

ing to the features of unique creative works. But the

approach adopted by the Second Circuit severely distorts

that assessme..t and thus threatens a more general dis-

ruption of the careful balance reflected in copyright law.

“The primary objective of copyright is not to reward

the labor of authors, but ‘{t]o0 promote the Progress of Sci-

ence and useful Arts.’”’ Feist Publications, Inc. v. Rural

Tel. Serv. Co., 111 S. Ct. 1282, 1290 (1991) (citations

omitted). In pursuit of this goal, copyright law joins

patent law in seeking to respect both “the interests of

authors and inventors in the control and exploitation of

their writings and discoveries on the one hand, and so-

ciety’s competing interest in the free flow of ideas, infor-

mation, and commerce on the other hand.” Sony Corp.

of America v. Universal City Studios, 464 U.S. at 429.°

8 See also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 109

S. Ct. 971, 975 (1989) (“From their inception, the federal patent

i

laws have embodied a careful balance between the need to promote

10

At its heart, copyright law thus involves a utilitarian cal-

culus about what degree of protection for original works

will foster the greatest degree of creative activity. In

this process, “ ‘reward to the [copyright] owner [is] a

secondary consideration,’ ”’ justified only as a means to

“induce release to the public of the products of his crea-

tive genius.’”’ /d. (quoting United States v. Paramount

Pictures, Inc., 334 U.S. 131, 158 (1948) ).

The fair-use doctrine helps to strike the proper balance

by authorizing artists and authors to “use” prior works

in the creation of new ones that express new, and often

critical, messages without depriving existing copyright

holders of the commercial incentives that encourage crea-

tivity. See Harper & Row, Publishers, Inc. v. Nation

Enters., 471 U.S. 539, 549-50 (1985); id. at 581 n.2

(Brennan, J., dissenting). Drawing from the case law,

Congress in 1976 listed four factors to be applied to eval-

uating a fair-use defense.” This codification, however, has

not proved successful in providing structure and predict-

ability in this important area of the law. The statutory

factors have an “almost infinite elasticity ... [and a]

concomitant inability to resolve difficult questions.” 3

Nimmer, § 13.05{A][5], at 13-102.6. All too often, “the

factors . . . tend to degenerate into post-hoc rationales

for antecedent conclusions, rather than serving as tools

for analysis.” Jd. at 13-102.10.

The solution, as this Court has suggested, is to give

primary importance to the fourth statutory factor: the ac-

tual or potential effect of the subsequent use on the mar-

innovation and the recognition that imitation and _ refinement

through imitation are both necessary to invention itself and the

very lifeblood of a competitive economy.” ).

® These four factors are: “(1) the purpose and character of the

use, including whether such use is of a commercial nature or is for

nonprofit educational purposes; (2) the nature of the copyrighted

work; (3) the amount and substantiality of the portion used in rela-

tion to the copyrighted work as a whole; and (4) the effect of the

use upon the potential market for or value of the copyrighted work.”

17 U.S.C. § 107.

11

Ket value of the prior work or its derivatives. See Stewart

». Abend, 110 S. Ct. at 1769; Harper & Row, Publishers,

Inc. v. Nation Enters, 471 U.S. at 566. Such an approach

correctly looks to whether the new work in some way ful-

fills the same “function” as the prior work, see Nimmer

§ 13.05/B], and thus threatens to interfere with the com-

mercial incentives that are the “engine of free expres-

sion” under the copyright laws, Harper & Row, Publish-

ers. Inc. v. Nation Enters., 471 U.S. at 558.

The Second Circuit’s decision in this case, however, ex-

emplifies a far less discerning approach, one that courts

tend to apply when they first address another factor—

the “purpose and character of the use’—and determine

that the use was “commercial” in nature. As we have

suggested, this problem has arisen because this Court

created a presumption that commercial use causes market

injury, Sony Corp. of America v. Universal City Studios,

464 U.S. at 451, but has not established a workable defini-

tion of “commercial use” that provides predictable stand-

ards or that would justify the Sony presumption across

the board. As a result, a subsequent use of a prior work

may undeservedly be labelled “commercial” in nature,

thereby effectively forfeiting the fair-use defense, even

where the use communicates a new and distinct message

and even where there is no real evidence of actual or po-

tential market injury.

9 Thus, here, the Second Circuit placed great reliance

on a single fact in determining that petitioner was en-

gaged in commercial exploitation: he was well paid for

his sculpture. See Pet. App. 14a (“Koons’ substantial

profit . . . militates against the finding of fair use”).

10 See also Pet. App. 4a (Koons’ “works sell at very substantial

prices, over $100, 100") : id. at 6a (“Three of the four copies made

were sold to collectors for a total of $367,000... .”). The court

also saw fit to note that “Tw hile pursuing his career as an artist,

[petitioner] also worked until 1984 as a mutual funds salesman, a

registered commodities salesman and broker, and a commodities

futures broker.” Jd. at 4a.

12

In so doing, the court was not alone. The case law in the

lower courts reflects abundant confusion over whether

receipt of compensation renders a particular use ‘‘com-

mercial” under the first statutory factor.'' In reality,

however, it should be obvious that the all-important

commercial noncommercial distinction cannot depend on

the mere fact of receipt of compensation. After all, artists

and authors of fiction—just like the critics, news reporters

and scholars whose works are cited in the statute as ex-

amples of presumptively ‘fair’? use '-—nearly always

seek to be paid for what they create."

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

1148, 1152 (9th Cir. 1986) (reproduction of magazine excerpt for

purposes of fundraising by nonprofit groups constitutes commercial

use); Brewer v. Hustler Magazine, Inc., 749 F.2d 527, 529 (9th Cir.

1984) (reproduction of photograph in magazine was a commercial

use); lowa State Univ. Research Found., Inc. v. American Broad-

casting Cos., 621 F.2d 57, 61 (2d Cir. 1980) (production of biog-

raphy of public figure for network broadcast constitutes commer-

cial use); Association of American Medical Colleges v. Mikaelian,

571 F. Supp. 144, 152 (E.D. Pa. 1983) (use for educational purposes

by for-profit organization is commercial), aff'd per curiam, 734 F.2d

3 (3d Cir. 1984). But see New Era Publications Int'l ApS v. Carol

Publishing Greup, 904 F.2d 152, 156 (2d Cir.) (publication of

biography is noncommercial despite anticipated profits), cert. de-

nied, 111 S. Ct. 297 (1990); Rosemont Enters., Inc. v. Random

House, Inc., 366 F.2d 303, 307-08 (2d Cir. 1966) (same), cert.

denied, 385 U.S. 1009 (1967); Haberman v. Hustler Magazine, Inc.,

626 F. Supp. 201, 210-11 (D. Mass. 1986) (reproduction in for-profit

magazine of prior works for purposes of commentary is noncom-

mercial). See also Maxtone-Graham v. Burtchaell, 803 F.2d 1253,

1262 (2d Cir. 1986) (“The commercial nature of a use is a matter

of degree, not an absolute ... .”), cert. denied, 481 U.S. 1059

(1987).

12217 U.S.C. $107 (“‘[Tihe fair use of a copyrighted work

for purposes such as criticism, comment, news reporting, teaching

13 Nor can the outcome turn on the amount of the compensation.

It hardly makes sense to give lesser leeway to an artist merely

because his prominence in the art world makes all of his works more

valuable.

13

This Court has at least suggested the proper answer to

this problem, in its application of the fair-use factors in

Harper & Row, Publishers, Inc. v. Nation Enters., supra.

There, the Court asked whether the use had the purpose

of “supplanting {one of| the copyright holder’s commer-

cially valuable right|s|.”” 471 U.S. at 562. It concluded

that a magazine’s quotation of extracts from unpublished

memoirs was commercial because the magazine had

usurped the right of first publication that had already

been sold to others. /d. Applied generally, this approach

would mean that the first fair-use factor would be as-

sessed in conjunction with the fourth factor—potentia!

market injury. A cha!lenged use would be “commercial”

if it had the potential to supplant demand for the orig-

inal or appropriated a valuable commercial right that

could otherwise have been sold in the marketplace.'! Such

an approach would assure that functional, market-based

considerations always retain their primary role in deter-

mining whether a particular use will interfere with the

commercial incentives that promote free expression.

Here, as we have suggested, that approach could not

have led to condemnation of petitioner as a commercial

exploiter as a matter of law. Petitioner here relied on the

obvious fact that his highly disturbing, limited-edition

sculpture, part of a gallery show criticizing the “banality”

of popular culture, in no way competed in the marketplace

with respondent’s photograph or its potential derivatives.

This meant that the value of the photograph to Rogers

remained unaffected. The Second Circuit nevertheless

14 The Second Circuit repeatedly quoted this Court’s statement in

Harper & Row, Publishers, Inc. v. Nation Enters. that the crux of

the issue is “whether the user stands to profit from exploitation

of the copyrighted material without paying the customary price.”

Pet. App. 14a, 16a (quoting 471 U.S. at 562). It seemed to believe

that Koons’ failure to pay a “customary price” by itself rendered

his use commercial. But this is obviously circular: it is the failure

to pay a “price” to the copyright holder that raises the fair-use issue

in the first place. The real question is whether the use makes it more

difficult to sell the original work, or derivative rights, to others.

14

avoided any real assessment of this question, by ignoring

the obviously distinctive qualities of the Koons sculpture,

labelling it a form of commercial exploitation, and thereby

simply presuming market injury that was not proved."

3. To be sure, after focusing on Koons’ profits, the

court of appeals then went on to consider his “contention

that the primary purpose of the use was for social com-

ment.” Pet. App. 14a. Here, however, it made another

fundamental error—-holding that while the Koons sculp-

ture might be a “satirical critique of our materialistic

society,” he could not escape the label of ‘commercial ex-

ploiter’”’ because the object of his critique was not suffi-

ciently well known to be recognizable te those who would

view the sculpture. Pet. App. 16a. As a result of this

fact, the court held, the sculpture was not a “parody” or

“satire” of the photograph, and thus did not qualify for

heightened protection

This aspect of the decision below is also important.

Parody and satire, as literary genres, have “thrived from

the time of Chaucer,” and are “deserving of substantial

freedom—-both as entertainment and as a form of social

and literary criticism.” Berlin v. B.C. Publications, Ince.,

329 F.2d 541, 545 (2d Cir.), cert. denied, 379 U.S. 822

(1964). In this century, as noted above, it has become

commonplace for artists also to use existing images in

the creation of new works that criticize what those

images represent. These works have become a key part

of the ‘dialogue’ between mass culture and its social

critics.

As one would expect, works that criticize prior works

through parody or satire have long been recognized as

15 Respondent offered, in support of his motion for summary judg-

ment, evidence establishing at most a theoretical possibility of sales

of the right to produce a derivative sculpture based on his photo-

graph. Petitioner offered affidavits directly contradicting this show-

ing. Because of the Sony presumption, the court of appeals ignored

this factual dispute and simply speculated that some market injury

was “not implausible.” Pet. App. 20a.

a

15

primary examples of fair use. When such works are

challenged under the copyright laws, “copying” in one

sense is both undisputec’ and obvious. But the law is

nevertheless receptive to such copying, for two reasons.

First, “many parodies are intended as criticisms of the

original, and for the author to be able to suppress criti-

cism would interfere with the literary marketplace and

distort the test of time.” R. Posner, Law and Litera-

ture: A Misunderstood Relation 350 (1988). Second, “a

parody is not intended to be a substitute for the original

jand! therefore, except insofar as it is effective

criticism, the parody should not diminish the sales of the

original author’s work and indeed may increase them.”

Id. In sum, this form of copying, in general, does not

interfere with any interests that prior copyright holders

can legitimately expect to have protected.

Thus, in this case, petitioner openly and deliberately

made use of the Rogers photograph in the creation of his

sculpture. But the Koons sculpture embodied a deliber-

ate aesthetic transformation of that prior image. The

faces of the people were rendered cartoon-like and blank.

The dogs, painted blue and given bulbous noses, also had

the appearance of cartoon characters. The work as a

whole was included in a show condemning the “banality”

of popular culture in a prominent New York gallery. On

such facts, it can hardly be supposed that petitioner was

competing for respondent’s audience or otherwise affect-

ing the demand for respondent’s “charming” photograph."

16 The Second Circuit’s failure to recognize the essential differ-

ences between the Rogers photograph and the Koons sculpture was

also reflected in its handling of a separate issue—“substantial simi-

larity.” This requirement, which applies even where, as here, the

defendant concedes some degree of actual copying, 3 Nimmer,

§ 13.03[A], at 13-23, calls for a qualitative determination whether

the nature and degree of the copying implicates copyright concerns

by affecting the legitimate interests of the creator of the original,

see id. at 13-45 to -47. In cases like this one, courts often ask

whether the “total concept and feel” of the two works is substan-

tially similar. See, e.g., Aliotti v. R. Dakin & Co., 831 F.2d 898, 901

16

The Secoad Cireuit nevertheless held that such an

artistic approach js per se illegitimate in those cases

Where the work being eviticized, while typical of some

aspect of culture, is not itself wel] known. This holding

is supported by some but not all of the rather confused

case law in this field." But such a rule ultimately makes

no sense. The policies underlying copyright provide no

basis for drawing 2 distinction between parodies of

famous works and parodies of lesser-known works that

typify something about our culture. Cf. Harper & Row.

Publishers, Ine. v. Nation Enters., 471 U.S. at 559 (“It

is fundamentally at odds with the scheme of copyright

to accord lesser rights in those works that are of great-

est importance to the public.”), Regardless of the celeb-

rity of the work being criticized, a new creation that

sends a different message to a different audience does not

supplant the demand for the earlier work and thus

does not implicate copyright concerns, See 3 Nimmer

$.13.05/B], at 13-102.12 ‘“But if regardless of medium,

the defendant’s work. although containing substantially

similar material, performs a different function than that

of the plaintiff's, the defense of fair use may be in-

(9th Cir, 1987) (citing cases). Here, however, the Second Circuit

did noteven view the actual sculpture, and asked only whether a lay

observer would recognize that the Koons sculpture was based in

part on the Rogers photograph, Pet. App. lla—a fact that petitioner

had already conceded. It thus gave no weight to the possibility that

petitioner's transformation of the photograph, creating an entirely

different aesthetic impression, might lead a fact-finder to find no

substantial similarity.

Ty Compare Elsmere Music, Inc. v. National Broadcasting Co.. 482

F. Supp. 741, 746 (S.D.N.Y.) (“the issue to be resolved . _ . is

Whether the use in question is a valid satire or parody, and not

whether it is a parody of the copied song itself”), aff'd on opinion

below, 623 F.2d 252 (2d Cir. 1980), with MCA, Ine. v. Wilson, 677

F.2d 180, 185 (2d Cir. 1981) (copyrighted work must be “at least

in part an object of the parody”), and Walt Disney Productions vy.

Air Pirates, 581 F.2d 751, 758 n.15 (9th Cir, 1972) (where prior

works are “not also an object of the parody,” the “need to conjure

them up would be reduced if not eliminated”), cert. ds nied, 439

U.S. 1132 (1979),

17

voked,’”’).'" Moreover, there are good reasons relating to

artistic authenticity why an artist might choose to base

his critique of popular culture on a real (although rela-

lively obscure) image, '”

The flimsiness of the court’s reasoning is apparent from

its suggestion that petitioner could huve mounted a

parody defense, if only he had displayed the Rogers

photograph with his sculpture. Pet, App. 16a (‘audience

fwareness of original “may come from the fact that

its existence is in some manner acknowledged by the

parodist in connection with the parody”). If the scope of

fair use in the parody context is to reflect the underlying

goals of copyright, the presence or absence of such 4

display cannot be a critical factor in the analysis. After

all, open acknowledgement of a prior source does not

alter the commercial] impact of a parody,

Instead, in parody cases as elsewhere, the determina-

tion whether a use is presumptively legitimate or eom-

mercially exploitive should be undertaken in a manner

consistent with this Court’s analysis in the Nation case,

It should turn on Whether the new work takes something

of value from the prior author or artist by fulfilling

demand for the original or by basing its OWN appeal in

wnole or in part on the creative efforts reflected in the

'’ The Second Circuit Stated that allowing parodies of relative]

unknown works would mean that there is “no practicable bounda;

to the fair use defense.” Pet. App. 16a This, of course, is not tru

Well-known works ar hardly subject to unlimited copying unde)

current standards. A purported parodist of a famon work mu

show that he in fact js communicating a new and critical messag

and not engaging in commercial exploitation. Se, Pp. 17-18 infra

Precisely the same limitation would apply to works making use o}

lesser-known images.

Indeed, it is the Second ( Ircuit’s approach that is t) Uy impra

ticable, Recognizability is hardly an “ejther or” proposition. It

a matter of degree, and di pends largely on the particular audience

considered,

tist

'’ It would contravene the very essence of the post-modern a}

tradition for an artist lik Koons to make up images intended to

represent popular culture, rather than incorporating real ones

18

prior work. The question should be whether the “parody”

is truly a work of criticism, with a distinct message and

audience, or is merely an effort to capitalize on the

appeal of the original to the commercial detriment of its

creator. See R. Posner, supra, at 350 (drawing a distine-

tion between critical “parodies” and noncritical “bur-

lesques,” which merely borrow from a prior work for

humorous effect and should not be authorized without

consent}.

The lower courts have groped toward a_ recognition

of this principle, but without establishing a clear and

workable rule. In some cases, where the original work

and the “parody” perform different functions in separate

genres, the absence of commercial exploitation has been

readily recognized. See, e.g., Berlin v. E.C. Publications,

Inc., 329 F.2d at 545 (publication of a satirical version

of song lyrics in a humor magazine had “neither the

intent nor the effect of fulfilling the demand for the

original”); Haberman v. Hustler Magazine, Inc., 626

F. Supp. 201, 211 (D. Mass. 1986) (“It does not appear

that [the] reproduction of Haberman’s postcards was

intended to increase sales of the magazine and, thus,

in this fashion, improperly capitalize on Haberman’s

work.”’) ; id. (“Haberman markets his works as fine arts

photographs and postcards. The Hustler reproductions

. would not serve as suitable substitutes for someone

who wished to collect the art ....”) Where, however,

the two works are in the same genre (e.g., two performed

ur recorded songs, or two television shows) there remains

substantial doubt about when a parody’s distinctive mes-

sage is enough to negate the charge of commercial ex-

ploitation. See MCA, Inc. v. Wilson, 677 F.2d 180, 185

(2d Cir. 1981) (“We are not prepared to hold that a

commercial composer can plagiarize a competitor’s copy-

righted song, substitute dirty lyrics of his own, perform

it for commercial gain, and then escape liability by call-

ing the end result a parody or satire on the mores of

society.”) ; Warner Bros. v. American Broadcasting Cos.,

654 P.2d 204, 211 (2d Cir. 1981) (involving Superman

’

19

and the television show “Greatest American Hero”) (“we

question whether the |parody| defense could be used to

shield an entire work that is substantially similar to and

in competition with the copyrighted work”). But sec

Fisher v. Dees, 794 F.2d 432, 438 (9th Cir. 1986) (in-

volving the song “When Sunny Gets Blue” and a recorded

parody “When Sunny Sniffs Glue”) (“The two works do

not fulfill the same demand. Consequently, the parody

has no cognizable economic effect on the original.’’) ;

Acuff-Rose Music, Inc. v. Campbell, 754 F. Supp. 1150,

1153-59 (M.D. Tenn.) (following Fisher on similar

facts), app. dismissed, 929 F.2d 700 (6th Cir. 1991) .2°

Under any view, this case should be seen as one involv-

ing a true parody. There may well be cases where a

purported parody is nothing more than an effort to

appropriate valuable features of a prior work without

bothering to create an entirely new one. See MCA, Ine.

v. Wilson, 677 F.2d at 185 (purported parody song sim-

ply sought to capitalize on a popular tune). But here

there could be no suggestion that the Koons sculpture

lacked a critical message or that its commercial value

was enhanced in any way by the selection of the Rogers

photograph as a starting point. One reason for this,

as the Second Circuit recognized, was. that few people

who viewed the sculpture were likely even to be aware of

the photograph. Yet, ironically, this fact was treated as

a decisive consideration confirming that Koons acted “in

bad faith, primarily for profit-making motives.” Pet.

App. 17a.

Petitioner was thus put in a classic “double bind.” If

he had chosen a well-known image as the basis for his

critique, he might have been accused of exploiting exist-

ing public recognition. When he chose instead an image

*? Appropriate disapproval of works that merely “burlesque” prior -

works for humorous effect, without criticizing what those works

represent, may well explain the comments in the case law suggesting

that a parody must be in part a critique of the work used in its

creation. See note 17 supra.

20

that typified popular culture but was not well known—

at least in the world where his works are viewed and

sold—he was labelled a commercial exploiter precisely

because his work did not “conjure up” recognition of a

prior work. This determination, in turn, led inexorably

to a presumption of market injury and a denial of the

fair-use defense.*!

II. THIS CASE MERITS REVIEW BY THIS COURT.

This case involves issues of general importance merit-

ing review by this Court. The decision below is perhaps

the most glaring, but hardly the first, example of the

difficulties that the lower courts have had in determining

whether works are “commercial” and in applying copy-

right concepts to critical and parodic works. Moreover,

“! The court of appeals also ruled that petitioner had used much

more of the photograph than was necessary for a valid parody.

Pet. App. 18a (applying the third fair-use factor of the “amount

and substantiality” of the copying). While some courts have adopted

a similar limitation, see, e.g., Fisher v. Dees, 794 F.2d at 439

(parody may take “no more from the original than is necessary to

accomplish reasonably its parodic purpose’’), such a rule serves no

legitimate purpose in a case involving a true parody that has a

distinct message and audience and does not exploit the commercial

value of the original. See Elsmere Music, Inc. v. National Broad-

casting Co., 623 F.2d 252, 253 n.1 (2d Cir. 1980) (per curiam) (“A

parody is entitled at least to ‘conjure up’ the original. Even more

extensive use would still be fair use, provided the parody builds

upon the original, using the original as a known element of modern

culture and contributing something new for humorous effect. or

commentary.”),; 3 Nimmer § 13.05[C], at 13-102.25 (“But short of

such near-verbatim identity of content, the disparity of function

between a serious work, and a satire based upon it, will sometimes

justify the defense of fair use even where substantial similarity

exists.”) ; ef. Harper & Row, Publishers, Inc. v. Nation Ente rs., 471

U.S. at 550 (“‘[A] reviewer may fairly cite largely from the

original work, if his design be really and truly to use the passages

for the purposes of fair and reasonable criticism.’ ’’) (quoting

Folsom v. Marsh, 9 Fed. Cas. 342, 344 (C.C.D. Mass. 1841)): Sony

Corp. of America v. University City Studios, 464 U.S. at 447-56

(even total duplication of a prior work may sometimes constitute

fair use).

21

if left undisturbed, the Second Circuit’s eager condemna-

tion of petitioner's work as “wilful and egregious”

“piracy,” Pet. App. 23a, 18a, will have serious practical

consequences, inhibiting the creativity of many other

artists and authors.

The above discussion shows, at the very least, that this

area of the law is grossly in need of clarification. By

virtue of the Sony presumptions, identification of ‘“com-

mercial” uses of prior works has taken on enormous im-

portance. Yet the courts are far from reaching any con-

sensus about how to make such a determination—some-

times focusing on the profitability of a work but some-

times focusing (more appropriately in our view) on the

impact of the work on the commercial interests of the crea-

tor of a prior work. See note 11 supra. The result is a

series of decisions that provide little guidance to artists

and authors and tend to reflect, more than anything else,

the visceral reactions of judges to the merits of particular

creative efforts.

This case, involving a new work that sought to criticize

the very essence of a prior work, provides an appropriate

vehicle for addressing this problem. Parodists, satirists,

and other critics, after all, nearly always seek payment

for what they produce. A rule labelling such works, on

that basis, as “commercial” and therefore presumptively

“unfair” would work a major change in the latitude tra-

ditionally accorded to those who seek to express themselves

through parody.

Moreover, by granting review in this case, the Court

could also address the distinctive problems raised by

parodies that continue to plague the lower courts. As we

have noted, the existing case law is somewhat inconsistent

with respect to whether a purported parody must directly

criticize a prior work that is recognizable to the audience.

See note 17 supra. The courts are also confused about

how to separate true parodies from what Judge Posner

has called “burlesques,” which simply exploit the popu-

22

larity of features of prior works. Sec pp. 18-19 supra.

Such recurrent problems certainly warrant the attention

of this Court.

sut perhaps the most compelling argument for review

here is based on the practical consequences of the ruling

below, from a circuit that plays a central role in the ad-

ministration of the copyright laws. As the court of ap-

peals recognized, the fine arts have in recent years ex-

hibited a strong trend toward works that incorporate

images from popular culture. This entire post-modern

movement has now been placed in jeopardy by a decision

blatantly hostile to such an artistic approach.

The Second Circuit’s ruling sends an unmistakable

message that use of existing images will be viewed as

presumptively illegitimate, even where, as here, there is

no realistic concern about interference with the legitimate

interests of the creators of those images. See M. Buskirk,

“Appropriation Under the Gun,” Art in America, at 37

(June 1992} (citing the “ominous implications” of the

Second Circuit’s ruling for the post-modern movement).

In essence, the court below decreed that artists who sel]

works incorporating images from the culture at large

will be treated as if they are in the “business” of com-

mercial appropriation of the work of others unless they

can show that the audience will understand their work as

a comment, not just on popular culture, but also on a par-

ticular prior work. Even then, if those artists sell their

works for substantial amounts of money, it is far from

clear that the fair-use privilege will be applied.**

The predictable result of this decision will be a spate

of lawsuits by copyright holders seeking to profit from

the fact that images from popular culture have turned up

in the works of post-modern artists. These lawsuits wil]

*2 We note that, under the current copyright regime, almost any

image that exists in popular culture can claim copyright protection.

Thus, post-modern artists have no real choice about selecting images

that have the potential for producing copyright challenges.

iN a

23

be brought even where, as here, there is no actual com-

mercial injury. Indeed, they will be brought precisely

because copyright holders will object to being held up as

representatives of “banal” or otherwise undesirable as-

pects of our culture.

If such claims are sanctioned, the current evolution of

fine arts will be severely affected. Copyright holders cer-

tainly are not going to grant licenses to artists seeking to

use images in this way. See Fisher v. Dees, 794 F.2d at

437 (“Parodists will seldom get permission from those

whose works are parodied. Self-esteem is seldom strong

enough to permit the granting of permission even in ex-

change for a reasonable fee.’’) The net result will be

suppression of artistic criticism of popular culture—an

outcome that utterly defeats the purposes of copyright

because it inhibits creativity while in no way furthering

the legitimate interests of copyright holders in profiting

from their works in the ways that they would ordinarily

anticipate.

Indeed, the effects of the decision below will also reach

well beyond the fine arts. Many different kinds of creative

activity, in many fields, depend on the use of prior works.

It is only where such use in fact threatens commercial

injury that the copyright laws should come into play.

Yet the ruling below sends an ominous message that even

in the absence of actual or potential injury, reliance on

the defense of fair use may be a risky proposition. This

Court should act to remove this threat to the free flow

of legitimate ideas and expression.

P24

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

JOHN B. KOEGEL *

138 Spring Street

New York, New York 10012

(212) 226-7744

PAUL M. SMITH

KLEIN, FARR, SMITH & TARANTO

2550 M Street, N.W.—Suite 350

Washington, D.C. 20037

(202) 775-0184

Counsel for Petitioner

* Counsel of Record