Scrabble v. Scrabulous

There is, on the one hand, having a legal right to one's intellectual property. On the other, there is the question: does it make business sense to assert that right to shut down an infringer?

Looking to cut down its main competition and most high-profile copycat in the growing market for social gaming, Hasbro has sued the two Indian brothers behind the popular Web game Scrabulous, which has more than half a million regular users on the social network Facebook.

Hasbro, the Rhode Island company that owns the trademark to the 60-year-old board game, Scrabble, on which Scrabulous is closely based, has also asked Facebook to remove the game under the Digital Millennium Copyright Act, saying that it infringes the company’s intellectual property. Facebook has not yet responded to or commented on the request.

A copy of the complaint is here (pdf).

As Josh Quitner writes, "[A]s a tech writer and life-long student of what passes for Internet economics, I’m baffled. Is Hasbro just a stupid Potato Head? Or is this a brilliant game of Stratego?" And Mike Masnick observes:

The Scrabulous/Hasbro situation is a perfect example of Matt Mason's thesis that "piracy" is almost never about "theft." It's almost always a market indicator that the market is unhappy with what's being offered. It's the market showing companies what they want.

The relationship between factor 3 and factors 1 and 4

Some have suggested that even if KLF’s version of K Cera Cera (1) is a genuinely creative and original work (i.e., a “transformative work”) and (2) has no effect on the primary or derivative markets for Que Sera, Sera, the fact that it appropriates virtually all of Que Sera, Sera militates against a finding of fair use. This argument, grounded in the third first use factor – “the amount and substantiality of the portion used in relation to the copyrighted work as a whole” – is, in essence, as follows:

K Cera Cera could have evoked the meaning it draws from Que Sera, Sera (a distinctly American naïve and fatalistic optimism expressed both in the song’s lyrics and in its identification with Doris Day’s public persona) by simply appropriating one chorus, not the entire work. Since K Cera Cera instead used virtually the entirety of Que Sera, Sera, it fails the third fair use factor and therefore cannot be fair use regardless of its originality and market impact

There quite plainly are statements by courts that the third fair use factor suggests that appropriation of copyrighted works must be limited to the amount necessary to accomplish the purpose of the appropriating work. Thus, for example, in Bill Graham Archives LLC v. Dorling Kindersley Ltd., 386 F. Supp. 2d 324, 330 (S.D.N.Y. 2005), the court stated that “[t]his ‘inquiry must focus upon whether “the extent of . . . copying” is consistent with or more than necessary to further 'the purpose and character of the use.’ Castle Rock Enter. v. Carol Publishing Group, 150 F.3d 132, 144 (2d Cir. 1998), citing Campbell, 510 U.S. at 586-87, 114 S. Ct. 1164, 127 L. Ed.2d 500.”

I would suggest, however, that, once if it is conceded that K Cera Cera appropriates the heart of Que Sera, Sera, whether it quotes one verse, half the song, or the entire song is irrelevant as long as K Cera Cera is (1) genuinely transformative and (2) has no impact on Que Sera, Sera’s primary and derivative markets.

If in fact K Cera Cera is genuinely transformative and has no impact on Que Sera, Sera’s markets, it makes no difference to Que Sera, Sera’s copyright holders whether one verse or the entire song is appropriated. If it makes no difference, why should the amount matter?

I think too my view is confirmed by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 586 (1994)(emphasis added), in which the Court stated:

The third factor asks whether “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” § 107(3) (or, in Justice Story's words, “the quantity and value of the materials used,” Folsom v. Marsh, supra, at 348) are reasonable in relation to the purpose of the copying. Here, attention turns to the persuasiveness of a parodist's justification for the particular copying done, and the enquiry will harken back to the first of the statutory factors, for, as in prior cases, we recognize that the extent of permissible copying varies with the purpose and character *587 of the use. See Sony, supra, 464 U.S., at 449-450, 104 S.Ct., at 792-793 (reproduction of entire work “does not have its ordinary effect of militating against a finding of fair use” as to home videotaping of television programs); Harper & Row, supra, 471 U.S., at 564, 105 S.Ct., at 2232 (“[E]ven substantial quotations might qualify as fair use in a review of a published work or a news account of a speech” but not in a scoop of a soon-to-be-published memoir). The facts bearing on this factor will also tend to address the fourth, by revealing the degree to which the parody may serve as a market substitute for the original or potentially licensed derivatives. See Leval 1123.

Finally, I know of no case holding that a work constituted an infringement based on the appropriation of too great a portion of the copyrighted material in which that appropriation did not have an impact on the markets for the copyrighted work. Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985), and Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987), are two examples of such cases. In both, the infringing use plainly hurt the copyrighted work’s primary market. In Harper & Row, The Nation published the chapter of President Ford’s autobiography that discussed his pardon of Richard Nixon. Since the public had by far more interest in that aspect of Ford’s life than any other, the publication hurt the sales of the autobiography. Why buy the book when the magazine gives you everything you’re interested in at a much lower price? In Salinger, a biography quoted long portions of J.D. Salinger’s letters. The infringement was not merely a result of the fact the excerpts from the letters far exceeded what was necessary to supporting the book’s biographical points. It was because there was an audience of Salinger fans so hungry for any new writing by Salinger (who had not published a word since 1965) that they would buy the book simply to read new Salinger. The biography, in short, was exploiting Salinger’s primary market for his own copyrighted works.

The implications of allowing creative appropriation art

In Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006)(pdf), the Second Circuit did seem to adopt a version of the reasoning in the preceding post: a work that appropriates the heart of another copyrighted work constitutes fair use as long as it (1) is a genuinely creative work and (2) does not exploit a market created by the copyrighted work. As previously noted on this blog, the Second Circuit concluded that Koons' painting, Niagara, passed the "transformative test" “almost perfectly” because Koons changed the original copyrighted picture’s “colors, the background against which it is portrayed, the medium, the size of the objects pictured, their details.” Also, and “crucially,” Koons’s painting had an “entirely different purpose and meaning – as part of a massive painting commissioned for exhibition in a German art-gallery space.” Thus, the court concluded, “[t]he question is whether Koons had a genuine creative rationale for borrowing Blanch’s image, rather than using it merely to get attention or to avoid the drudgery in working up something fresh.” The court, of course, concluded Koons did have such a genuine creative rationale.

Obviously, too, the court had to conclude that Niagara had no impact on the market for the original copyrighted photo Koons had appropriated. Reaching that conclusion in Blanch v. Koons was easy; Koons' painting was directed at a market for fine art that bore little economic relationship to the market at which the original photograph was aimed -- commercial advertising. Nevertheless, it is important to remember that in Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), the Supreme Court did not actually find that 2 Live Crew's parody of Roy Orbison's "Oh, Pretty Woman" constituted fair use. Rather, Justice Souter required the trial court on remand to determine whether or not 2 Live Crew's song had an impact on the primary or derivative markets for Roy Orbison's song:

In explaining why the law recognizes no derivative market for critical works, including parody, we have, of course, been speaking of the later work as if it had nothing but a critical aspect (i.e., "parody pure and simple," supra, at 22). But the later work may have a more complex character, with effects not only in the arena of criticism but also in protectable markets for derivative works, too. In that sort of case, the law looks beyond the criticism to the other elements of the work, as it does here. 2 Live Crew's song comprises not only parody but also rap music, and the derivative market for rap music is a proper focus of enquiry, see Harper & Row, 471 U.S., at 568 ; Nimmer 13.05[B]. Evidence of substantial harm to it would weigh against a finding of fair use, because the licensing of derivatives is an important economic incentive to the creation of originals. See 17 U.S.C. 106(2) (copyright owner has rights to derivative works). Of course, the only harm to derivatives that need concern us, as discussed above, is the harm of market substitution. The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market.

Although 2 Live Crew submitted uncontroverted affidavits on the question of market harm to the original, neither they nor Acuff-Rose introduced evidence or affidavits addressing the likely effect of 2 Live Crew's parodic rap song on the market for a non-parody, rap version of "Oh, Pretty Woman." And while Acuff-Rose would have us find evidence of a rap market in the very facts that 2 Live Crew recorded a rap parody of "Oh, Pretty Woman" and another rap group sought a license to record a rap derivative, there was no evidence that a potential rap market was harmed in any way by 2 Live Crew's parody, rap version. The fact that 2 Live Crew's parody sold as part of a collection of rap songs says very little about the parody's effect on a market for a rap version of the original, either of the music alone or of the music with its lyrics. The District Court essentially passed on this issue, observing that Acuff-Rose is free to record "whatever version of the original it desires," 754 F.Supp., at 1158; the Court of Appeals went the other way by erroneous presumption. Contrary to each treatment, it is impossible to deal with the fourth factor except by recognizing that a silent record on an important factor bearing on fair use disentitled the proponent of the defense, 2 Live Crew, to summary judgment. The evidentiary hole will doubtless be plugged on remand.

(citations and footnotes omitted).

In this day and age, a day and age that literally is no more than 2 to 5 years old, the implications of the Second Circuit's decision in Blanch v. Koons are potentially profound and problematic. The technological ease of ease of creating pieces of "appropriation art" and instantly disseminating them worldwide means that we will have an infinite number of creations that beg the question: do they affect the primary or derivative markets of the copyrighted works they appropriate? Could the courts (or any other institution) possibly cope with the burden of making those decisions?

Where is the line between derivative and transformative works

Could it be that the line between a derivative piece of appropriation art and a transformative one (i.e., the line between infringement and fair use) is defined by whether the allegedly infringing work is (1) creative and (2) does not exploit a market created by the original work?

In other words, a commercial work can appropriate the heart (or even the entirety) of a copyrighted work without infringing the copyright if it (1) is a genuinely creative work and (2) does not exploit a market created by the copyrighted work.

The Seinfeld trivia book challenged in Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132 (2nd Cir. 1998), failed on both counts: (1) it was a collection of "facts" derived from Seinfeld and simply rearranged (much like the telephone directory in Feist) and (2) it was directed at fans of the Seinfeld show, a market the show had created and had therefore had the exclusive right to exploit.

digital information + the internet = free appropriation = free expression

More from Negativland, via Welthassle:

FREE APPROPRIATION IS INEVITABLE when a population bombarded with electronic media meets the hardware that encourages them to capture it.

AS ARTISTS, our work involves displacing and displaying bites of publicly available, publicly influential material because it peppers our personal environment and affects our consciousness. In our society, the media which surrounds us is as available, and as valid a subject for art, as nature itself.

AS ARTISTS, the economic prohibition of clearance fees and the operational prohibition of not being able to obtain permission when our new context is unflattering to our samples should not diminish our ability to reference and reflect the media world around us.

OUR APPROPRIATIONS are multiple, transformative, and fragmentary in nature; they do not include whole works.

OUR WORK is an authentic and original “whole” being as much more than the sum of it’s samples. This is not a form of “bootlegging”, “piracy” or “counterfeiting” intending to profit from the commercial potential of the subjects appropriated. The law must come to terms with distinguishing the difference between economic intent and artistic intent.

THERE IS NO DEMONSTRABLE NEGATIVE effect on the market value of the original works from which we appropriate. or the cultural status or incomes of the artists who made the original works. Referencing a work in a fragmentary way is at least as likely to have a positive effect on these areas of concern. (RAP/HIP HOP sampling played a big part in the renewal of James Brown’s career, and he has sued them for it!)

THE URGE TO MAKE one thing out of other things is an entirely traditional, socially healthy, and artistically valid impulse which has only recently been criminalized in order to force private tolls on the practice (or prohibit it to escape embarrassment). These now all-encompassing private locks on mass media have led to a mass culture that is almost completely “professional”, formalized and practically immune to any form of bottom-up, direct-reference criticism it doesn’t approve of.

THE COURTS’ often-espoused principle that “if it’s done for profit, it can’t be fair use”, represents a thoughtless and carelessly misguided prejudice against the struggle of new art to survive. Making media- any media- is expensive. It requires substantial up front investments in time and manufactured goods to create, duplicate, and distribute anything. The courts’ easy reliance on a not-for-profit standard for fair use ignores the reality that artists, no matter what they choose to do, need to support themselves and their work with a return on their investment just like everyone else. The currently applied ‘nonprofit’ standard simple assures that only the independently wealthy may dabble in fair use. If society values the challenging and reforming aspects of critical, fair use works that bubble up from independent grassroots thinking, the law should not condone the smothering of such works by disallowing their economic survival in our free marketplace.

WE BELIEVE that artistic freedom for all is more important to the health of society then the supplemental and extraneous incomes derived from private copyright tariffs which create a cultural climate of art control and Art Police. No matter how valid the original intent of our copyright laws may have been, they are now clearly being subverted when they are used to censor resented works, to suppress the public need to reuse and reshape information. and to garner purely opportunistic incomes from any public use of previously released cultural material which is, in fact, already publicly available to everyone. the U.S. Constitution clearly shows that the original intent of copyright law was to promote a public good, not a private one. No one should be allowed to claim private control over the creative process itself. This struggle is essentially one of art against business, and ultimately about which one must make way for the other.