Transformativeness

In United States copyright law, transformativeness is a characteristic of some derivative works that makes them transcend, or place in a new light, the underlying works on which they are based. In computer- and Internet-related works, the transformative characteristic of the later work is that it provides the public with a benefit not previously available to it, which would otherwise remain unavailable. Such transformativeness weighs heavily in a fair use analysis and may excuse what seems a clear copyright infringement from liability.

Campbell

Transformativeness is a crucial factor in current legal analysis of derivative works largely as a result of the Supreme Court's 1994 decision in Campbell v. Acuff-Rose Music, Inc. The Court's opinion emphasized the importance of transformativeness in its fair use analysis of the accused infringers' parody of "Oh, Pretty Woman," which the case involved. In parody, as the Court explained, the transformativeness is the new insight that readers, listeners, or viewers gain from the parodic treatment of the original work. As the Court pointed out, the words of the parody "derisively demonstrat[e] how bland and banal the Orbison [Pretty Woman] song" is.

Leval article

The modern emphasis of transformativeness in fair use analysis stems from a 1990 article by Judge Pierre N. Leval in the Harvard Law Review, Toward a Fair Use Standard,^[1] which the Supreme Court quoted and cited extensively in its Campbell opinion. In his article, Judge Leval explained the social importance of transformative use of another's work and what justifies such a taking:

I believe the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. ...[If] the secondary use adds value to the original—if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.

Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses.

L.H.O.O.Q.

Marcel Duchamp's L.H.O.O.Q., a parody of Leonardo's Mona Lisa, and also known as the Mona Lisa With a Moustache, is an example of a highly transformative work that accomplishes its transformative effect with what seems to be a minimum of added material. L.H.O.O.Q. has been described as the most famous derivative work in the world,^[2] perhaps because of its widespread use in law schools for pedagogic purposes.

Marcel Duchamp created the work by adding, among other things, a moustache, goatee, and the caption "L.H.O.O.Q." (meaning “she has a hot tail”^[3]) to Leonardo’s iconic work. These few, seemingly insubstantial additions were highly transformative because they incensed contemporary French bourgeoisie,^[4] by mocking their cult of “Jocondisme,”^[5] at that time said to be “practically a secular religion of the French bourgeoisie and an important part of their self image.” Duchamp’s defacement of their icon was considered “a major stroke of epater le bourgeois." Thus, it has been said that the “transformation of a cult icon into an object of ridicule by adding a small quantum of additional material can readily be deemed preparation of a derivative work.”^[6]

An animated parodic derivative work based on Duchamp's parodic derivative work—a parody of a parody—is available^[7] that could not have existed before the development of modern computer technology.

Arriba Soft, Perfect 10, and Authors Guild

The concept of transformativeness initially developed in relation to fair use of traditional works: translations of literary works, adaptations of musical works, and changes of medium for pictorial works.^[8] But in the 21st century, courts have also applied the "in a different manner or for a different purpose"^[9] rationale in Internet and computer-related works. In such cases, as illustrated by Kelly v. Arriba Soft Corporation^[10] Perfect 10, Inc. v. Amazon.com, Inc.,^[11] and Authors Guild, Inc. v. Google, Inc.,^[12] the courts find a derivative-work use (such as that of thumbnails in an image search engine, for indexing purposes) or a copy of text (to facilitate key-word indexing) transformative because it provides an added benefit to the public, which was not previously available and might remain unavailable without the derivative or secondary use.

Ninth Circuit decisions

The Ninth Circuit explained this in the Perfect 10 case:

Google’s use of thumbnails is highly transformative. In Kelly we concluded that Arriba’s use of thumbnails was transformative because “Arriba’s use of the images served a different function than Kelly’s use—improving access to information on the Internet versus artistic expression." Although an image may have been created originally to serve an entertainment, aesthetic, or informative function, a search engine transforms the image into a pointer directing a user to a source of information. Just as a “parody has an obvious claim to transformative value” because “it can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one,” a search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool. Indeed, a search engine may be more transformative than a parody because a search engine provides an entirely new use for the original work, while a parody typically has the same entertainment purpose as the original work.

Given the fact that the use was highly transformative, the court turned to the issue of striking a balance between the value to the public of the transformative use and the degree to which Google's use was commercial and superseded that of the author. It concluded that it was obliged to strike a balance:

In conducting our case-specific analysis of fair use in light of the purposes of copyright, we must weigh Google’s superseding and commercial uses of thumbnail images against Google’s significant transformative use, as well as the extent to which Google’s search engine promotes the purposes of copyright and serves the interests of the public. Although the district court acknowledged the “truism that search engines such as Google Image Search provide great value to the public,” the district court did not expressly consider whether this value outweighed the significance of Google’s superseding use or the commercial nature of Google’s use. The Supreme Court, however, has directed us to be mindful of the extent to which a use promotes the purposes of copyright and serves the interests of the public.

It then concluded that the public benefit had the greater weight here:

We conclude that the significantly transformative nature of Google’s search engine, particularly in light of its public benefit, outweighs Google’s superseding and commercial uses of the thumbnails in this case. . . . We are also mindful of the Supreme Court’s direction that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

The Ninth Circuit's treatment of transformativeness and fair use in the Arriba Soft and Perfect 10 cases illustrates different data points on the copyright infringement spectrum, at least with respect to transformativeness and fair use. Arriba Soft was a relatively polar case. The harm to Kelly, the copyright owner, was negligible; it was hardly more than his hurt feelings.^[13] Thus, the Ninth Circuit said in its opinion that "Arriba's creation and use of the thumbnails [the derivative work] does not harm the market for or value of Kelly's images." On the other hand, the court found that Arriba's use benefited the public: "Arriba's use of the images serves a different function than Kelly' s use—improving access to information on the internet versus artistic expression." The balance thus tilted strongly in Arriba's favor. This led the Ninth Circuit to be the first court to make the equation highly beneficial to public = transformative, and as the Supreme Court explained in Campbell, the more transformative a derivative use the more likely the use is to be a fair use.

The Campbell Court recognized that the balance may not always be one-sided, as it was in Campbell itself and in Arriba Soft. In the Perfect 10 case the interests were more evenly balanced, for the first time in a derivative work case involving new information technology. Both Google and Perfect 10 seemed to have legitimate interests at stake and support for their respective positions. Thus, there was a finding that "Google’s wide-ranging use of thumbnails is highly transformative: their creation and display is designed to, and does, display visual search results quickly and efficiently to users of Google Image Search." But Google's use had some commercial aspects and was claimed to impair P10's commercial interests. Yet, on balance the Ninth Circuit found that the transformativeness outweighed the other fair use factors because "Google has provided a significant benefit to the public" in facilitating image searches by means of thumbnail images.

Second Circuit—Authors Guild

Still another data point is provided in the Second Circuit's 2015 decision in Authors Guild, Inc. v. Google, Inc.^[14] The court's opinion, written by Judge Pierre Leval, a highly influential scholar of fair use,^[15] explains how Google's copying entire texts, in order to digitalize them so that the public (users) can search for key words and see displays of snippets of the text surrounding them, "is transformative within the meaning of Campbell."^[16] He explains more specifically:

Google’s making of a digital copy to provide a search function is a transformative use, which augments public knowledge by making available information about Plaintiffs’ books without providing the public with a substantial substitute for matter protected by the Plaintiffs’ copyright interests in the original works or derivatives of them. The same is true, at least under present conditions, of Google’s provision of the snippet function.^[17]

Google’s Library Project, which began in 2004, involves agreements between Google and a number of the world’s major research libraries. Under these agreements, the libraries select books from their collections to submit to Google for inclusion in the project. Google makes a digital scan of each book, extracts a machine-readable text, and creates an index of the machine-readable text of each book. Since 2004, Google has scanned, rendered machine-readable, and indexed more than 20 million books, including both copyrighted works and works in the public domain. The vast majority of the books are non-fiction, and most are out of print. The digital corpus created by the scanning of these millions of books enables the Google Books search engine. Members of the public who access the Google Books website can enter search words or terms of their own choice, receiving in response a list of all books in the database in which those terms appear, as well as the number of times the term appears in each book. The court stated: "The search tool permits a researcher to identify those books, out of millions, that do, as well as those that do not, use the terms selected by the researcher. Google notes that this identifying information instantaneously supplied would otherwise not be obtainable in lifetimes of searching."

The search engine also makes possible new forms of research, known as “text mining” and “data mining.” Google’s “ngrams” research tool draws on the Google Library Project corpus to furnish statistical information to Internet users about the frequency of word and phrase usage over centuries. This tool permits users to discern fluctuations of interest in a particular subject over time and space by showing increases and decreases in the frequency of reference and usage in different periods and different linguistic regions. It also allows researchers to comb over the tens of millions of books Google has scanned in order to examine “word frequencies, syntactic patterns, and thematic markers” and to derive information on how nomenclature, linguistic usage, and literary style have changed over time.

The court concluded as to the search function: "We have no difficulty concluding that Google's making of a digital copy of Plaintiffs' books for the purpose of enabling a search for identification of books containing a term of interest to the searcher involves a highly transformative purpose, in the sense intended by Campbell." Downloading and storing complete digital copies of entire books was such copying as "was essential to permit searchers to identify and locate the books in which words or phrases of interest to them appeared." Therefore, the court had "no doubt that the purpose of this copying is the sort of transformative purpose described in Campbell as strongly favoring" a conclusion of fair use. Moreover, display of the snippets was essential to show the searcher enough context surrounding the searched term to permit of decision whether the passage in the book is relevant to the searcher's purpose.

The court rejected the authors' argument that Google's status as a commercial enterprise disqualified its claim of fair use:

[W]e see no reason in this case why Google's overall profit motivation should prevail as a reason for denying fair use over its highly convincing transformative purpose, together with the absence of significant substitutive competition, as reasons for granting fair use. Many of the most universally accepted forms of fair use, such as news reporting and commentary, quotation in historical or analytic books, reviews of books, and performances, as well as parody, are all normally [40] done commercially for profit.^[18]

Google made an unauthorized digital copy of the entire book, but it did not reveal that digital copy to the public. The copy in Google's files was made available to the public only to enable the search functions to reveal limited, important information about the books. Therefore, the court said, "not only is the copying of the totality of the original reasonably appropriate to Google's transformative purpose, it is literally necessary to achieve that purpose." The reason is that if "Google copied less than the totality of the originals, its search function could not advise searchers reliably whether their searched term appears in a book."^[19]

The ability to users to obtain snippets of a book by using the search function did not create a market substitute for the original book, thereby depriving the author of her market:

Snippet view, at best and after a large commitment of manpower, produces discontinuous, tiny fragments, amounting in the aggregate to no more than 16% of a book. This does not threaten the rights holders with any significant harm to the value of their copyrights or diminish their harvest of copyright revenue.^[20]

The court summarized its analysis of transformativeness by concluding:

In sum, we conclude that . . . Google's unauthorized digitizing of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses. The purpose of the copying is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals. Google's commercial nature and profit motivation do not justify denial of fair use.^[21]

Screenshot of Half.com pop-up ad over Amazon's Web page

Pop-ups

The use of pop-up advertising, in which third-party advertisements pop up on a competitor’s Web page and change its appearance to create a derivative work, may present more difficult transformativeness issues. On the one hand, the pop-ups provide the public with additional information about making buying decisions (particularly in the form of price comparisons).^[22] On the other hand, they adversely affect the Web page proprietor's interest in the integrity of its Web page and its investment interest in creating and maintaining the page. No court has yet addressed derivative work copyright considerations in terms of how to strike a balance between the competing interests at stake, here, although several courts have found no copyright infringement liability for one reason or another.^[23][24]

An example of promotional advertising for a pop-up company (Gator), illustrating various pop-up techniques for changing the appearance of another firm's Web page is shown in this Flash animation. For an argument supporting the claim that uses such as that of Half.com are transformative, see this When-U promo stored on the Wayback Machine. When-U's argument is based on the financial benefit to consumers when they are steered to cheaper sources for goods and services that they desire.

Photos of sculptures

On February 25, 2010, the United States Court of Appeals for the Federal Circuit ruled 2-1 that sculptor Frank Gaylord, sculptor of a portion of the Korean War Veterans Memorial, was entitled to compensation when an image of the memorial was used on a 37 cent postage stamp, because he had not signed away his intellectual property rights to the sculpture when it was erected. The appeals court rejected arguments that the photo was transformative.^[25]

In 2002 amateur photographer and retired Marine John All was paid $1,500 to use a photograph of his of the memorial on a snowy day for the stamp.^[26] More than $17 million worth of the stamps were sold. In 2006, Gaylord enlisted Fish & Richardson to make a pro bono claim that the Postal Service had violated his Intellectual property rights to the sculpture and he should be compensated. The Postal Service argued that Gaylord was not the sole sculptor (saying he had received advice from federal sources—who recommended that the uniforms appear more in the wind) and also that the sculpture was actually architecture. Gaylord won all of his arguments in the lower court except for one—the court ruled that the photo was fair use and thus Gaylord was not entitled to compensation. Gaylord appealed and won. The case could have been appealed to the United States Supreme Court or damages can be assessed by the lower court^[25] but on April 22, 2011, The US Court of Claims awarded Gaylord $5,000.^[27]

References

1. 103 Harv.L.Rev. 1105 (1990), available at
2. L.H.O.O.Q.—Internet-Related Derivative Works, Geo. Wash. Law School Copyright Course Materials.
3. "Elle a chaud au cul." This is French slang at the time for "she is a promiscuous (or nymphomaniacal) woman."
4. See, for example, Debbie Lewer, Post-Impressionism to World War II (pub. Blackwell Pub. 2005), at pp. 223-24, explaining Walter Benjamin's essay, "The Work of Art in the Age of Mechanical Reproduction," as first conceptualizing "what Marcel Duchamp had already shown in 1919 in L.H.O.O.Q. by iconoclastically altering reproduction of the Mona Lisa ... Marcel Duchamp succeeded in destroying what Benjamin called the traditional art work's aura, that aura of authenticity and uniqueness"—available at
5. See, for example, Andreas Huyssen, After the Great Divide: "It is not the artistic achievement of Leonardo that is mocked by moustache, goatee, and obscene allusion, but rather the cult object that the Mona Lisa had become in that temple of bourgeois art reliogion, the Louvre." (Quoted in Steven Baker, The Fiction of Postmodernity, p.49—available at
6. L.H.O.O.Q.—Internet-Related Derivative Works, Geo. Wash. Law School Copyright Course Materials.
7. Stern, Richard H. (2004). "Chapter 6: Copyright Protection AgainstDerivative-Work Versons of ComputerPrograms and Web Pages —Fair Use — Reverse Engineering". Computer Law 484. George Washington University Law School. Retrieved February 24, 2016.
8. Examples of derivative works are listed in 17 U.S.C. § 101—"translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation," to which list the statute then adds "any other form in which a work may be . . . transformed." The court explained, in Authors Guild, Inc. v. Google, Inc., - F.3d -, - (2d Cir. 2015): "While such changes can be described as transformations, they do not involve the kind of transformative purpose that favors a fair use finding." These are mere "change of form." In contrast, the kind of "transformative purpose" that the Campbell case spoke of in its fair use analysis is copying the text "for the purpose of criticism or commentary on the original or provision of information about it." (temporary cite: 2015 U.S. App. LEXIS 17988, *27-28 (2d Cir. Oct. 16, 2015)).
9. Leval.
10. 336 F.3d 811 (9th Cir. 2003).
11. 487 F.3d 701 (9th Cir. 2007).
12. - F.3d - (2d Cir. 2015).
13. See, for example, Brief on Rehearing of Kelly's amicus, the American Society of Media Photographers, which said (emphasis supplied): "[W]here search engines not only link to the copyright owner’s site, but also display full-size images from that site divorced from the context in which they were displayed by the copyright owner and presented in the context of the search engine’s own site, copyright infringement has been committed. ...[I]t was the actual display of the full-size images of Kelly’s work stripped from the original context that was not fair use."
14. - F.2d - (2d Cir, 2015). (temporary cites: 2015 U.S. App. LEXIS 17988; Slip opinion (Oct. 16, 2015))
15. See, e.g., Doug Lichtman, Fair Use, Leval, and Easterbrook (Oct. 15, 2014) (terming Leval's article in the Harv. L. Rev. "an enormously influential article on copyright’s fair use doctrine"); William Patry, Productive Use, Transformative Use, Complementary Use: Who's Right?, The Patry Copyright Blog (Oct. 28, 2006) ("Leval wrote his path breaking article"). The Supreme Court extensively cited Leval on transformativeness in its opinion inCampbell v. Acuff-Rose Music, Inc..
16. Slip op. at 2.
17. Slip op. at 4.
18. 2015 U.S. App. LEXIS 17988 at *39-40.
19. 2015 U.S. App. LEXIS 17988 at *45-46.
20. 2015 U.S. App. LEXIS 17988 at *52.
21. 2015 U.S. App. LEXIS 17988 at *69.
22. Arguments in support of the transformative nature of pop-up advertising are summarized in Endnote 4 of "Copyright Protection Against Derivative-Work Versions of Computer Programs and Web Pages" (cases and materials). It is argued that pop-up advertising reduces costs to consumers in obtaining product information, and reduces costs of sellers in identifying and reaching potential customers; and that allowing consumer access to this information would reduce producers' costs of accurately targeting their customers, so that marketplace competition would benefit. It is said that, by considering consumers' interests, "[t]his approach considers information costs more broadly from both the buyer's and the seller's perspective," and not just that of the litigants in a copyright infringement suit.
23. See cases and materials collected at and
24. Richard Stim (2009), Patent, Copyright & Trademark, p. 451, ISBN 978-1-4133-0920-1
25. An 85-Year-Old Sculptor vs. The Government – amlawdaily – February 25, 2010
26. http://blogs.geniocity.com/friedman/wp-content/uploads/2009/07/Stamp-from-The-Column.jpg
27. Mike Doyle (April 25, 2011). "Korean War memorial sculptor wins and loses at the same time". McClatchy.