Parodying a brand? Not everything is fair use

7月 2021

Fair use is an American legal doctrine on copyright that allows limited use of copyrighted material (a work, for example) without the permission or consent of the copyright holder. It is a license for use restricted to either educational or review purposes. 

However, there are a number of factors that have been identified by the US Courts in order to consider whether the use made is valid and reasonable. These requirements or factors are: 

(1) The purpose and character of the disputed use, 

(2) the nature of the copyrighted work, 

(3) the significance of the part used in relation to the whole work, and, 

(4) the effect of such use on the potential market or on the value of the protected work. 

In Spain, although the concept of fair use does not exist per sethere are judicial pronouncements that delimit this operation, which prevents copyright derived from a work from being configured as absolute rights in the sense of the possibility of a free and gratuitous use of said work, as long as it is for the purposes of criticism, commentary and news, reporting and/or teaching. The factors or requirements for the consideration of its validity are very similar to those in the USA. 

In any case, it is important to point out that this doctrine is protected, when we speak of trademarks, by the Trademark Law1, and, when we speak of works of art, by the Intellectual Property Law2; even, on some occasions, by the Unfair Competition Law3, from the perspective of acts of confusion and the exploitation of the reputation of others. 

Thus, while the purpose of Intellectual Property law is to induce the creation of new works, the purpose of trademark law is to safeguard the distinctive character of the signs and avoid confusion on the part of the consumer. 

In this sense, the question then arises: 

Is it possible to parody a brand or a work? 

The answer, as it usually happens is “it depends”. Each case is different, and all the arguments, evidence and circumstances will therefore have to be considered. However, always on the basis of the four factors mentioned above. 

Warhol case, “Prince Series“: 

An example in which the use of a work was not considered to be covered by fair use was the case of Andy Warhol’s works. In particular, his “Prince Series”. This series, produced by the artist, consisted of a composition of fifteen illustrations that Warhol created on the basis of a picture of the singer Prince (whose photographer was Lynn Goldsmith in 1981). Here, we already have a first problem, since Warhol’s work was based on Goldsmith’s work (picture). 

The photographer therefore contacted the Andy Warhol Foundation (the artist’s heir and therefore the holder of the IP rights) to report the alleged copyright infringement of her picture. In response, the Foundation filed a lawsuit against Goldsmith seeking a declaration that the “Prince Series” did not infringe such rights; and, in the alternative, that such use would in any event be covered by the fair use exception. 

Although initially, at first instance, the Southern District Court of New York ruled on 1 July 2019 (No. 1: 2017cv2532) in which it stated that the “Prince Series” was covered by fair use, the US Court of Appeals (Judgment dated 26 March 2021, Docket No. 19-2420-cv), agreed with the photographer, overturning the first instance judgment and ruling that the work of Andy Warhol was not covered by fair use, but rather that it was an infringement of copyright. 

The reasons given by the Court, in relation to the factors explained at the beginning, were as follows:  

(1) In relation to the purpose and character of the use, it became necessary to analyze whether the “Prince Series” could be considered a transformation in the sense of embodying a different artistic purpose, completely separate from the original.  At this point, the question was to determine what we mean by a substantially different work and how separated it should be from the original.  

In relation to this first point, the Court clarifies that it is not necessary for the original work to be barely recognizable in order to speak of a transformative use, but it is true that this use must comprise more than the simple imposition of an artistic style that maintains the essential elements of the original. And, on the basis of this argument, the Court held that the “Prince Series” did not constitute a transformation (a transformative use) of Goldsmith’s photograph, since the essential elements of the original picture were maintained, without altering them significantly, and the original picture is therefore recognizable at all times. 

(2) As regards the nature of the protected work, the fact that the picture was a creative and undisclosed work worked in the photographer’s favor, even if the picture had been licensed (as Goldsmith had at the time licensed the rights to her picture to Vanity Fair magazine for an illustration of it). 

(3) On the third factor, the importance of the part used in relation to the whole of the work, the Court recognized that Goldsmith could not have a monopoly over Prince’s facial features, but could have a monopoly over the image of the singer as reflected in the picture.  Thus, it is noted that the “Prince Series” takes significant elements from the picture (qualitatively and quantitatively) which make the picture easily recognizable in Warhol’s work. 

(4) Finally, as regards the fourth factor, namely the effect of that use on the potential market or on the value of the protected work, the Court agrees with the decision at first instance that the ‘primary’ markets for the picture and the ‘Prince Series’ do not overlap. However, the Court of Appeal also understands that Warhol’s work makes it difficult for Goldsmith to license the picture to illustrate articles and content, as the two creations are illustrations of the same singer aimed at the same type of consumers.    

Therefore, the conclusion of this second ruling is that Warhol’s work is not covered by fair use, as it does not meet any of the legal requirements for fair use. In fact, the Court even goes so far as to rule that Warhol did not merely copy the idea conveyed by Goldsmith’s photographic work, but directly copied the picture itself. 

In addition to cases such as the above, which cover Intellectual Property issues in relation to works and their corresponding copyright, there are many cases in relation to trademarks in which some companies take the protection of fair use by using, for example, what they call a ‘play on words’, but which can really lead to consumer confusion, such as the well-known parodies of Yves Saint Laurent (Ain’t Laurent Without Yves), Hermés (Homiés), Céline (Féline) or Gucci (Bucci). 

While it is true that fair use is sometimes valid, it does not always cover everything.  

Eduardo Zamora | Sara del Río 

Image: Jonathan Singer on Unsplash