The text below represents commentary, not legal advice.
Return to: Critical Copyright, and more.
Return to: Paul Edward Geller, attorney.
Revised version of a
paper given at the interdisciplinary workshop held by the
Hiroshige
vs. Van Gogh :
Resolving the Dilemma of
Copyright Scope in Remedying Infringement
Paul Edward Geller
1. A Thought-Experiment
European literati and
artists became captivated by Japanese art, especially prints, in the latter
half of the nineteenth century. When in Paris, Vincent van Gogh, a collector of
Japanese prints himself, painted the Portrait of Old Tanguy. Tanguy had
an art-supply shop in which he displayed the works of avant-garde painters,
among others. The background of his Portrait shows a wall covered with
Japanese prints.
In the Fall of 1887, Van
Gogh painted his Japonaiseries. The most notable are based on a pair of
prints by Utagawa Hiroshige, the Plum Garden at Kameido and Sudden
Shower over the Great Bridge near Atake, from the series One Hundred
Views of Famous Places in Edo. Hiroshige, in his wood-block prints,
composes in clearly delineated levels of space and subtly gradated colors; Van
Gogh, in his oil paintings The Tree and The Bridge, pushes and
pulls our vision with agitated brush-strokes and boldly opposed colors. (Link to
these works.)
How would Hiroshige have
responded had he known what this foreign enthusiast had made of his works? It
might be a mistake to attribute to Hiroshige our litigious impulse to dispute
Van Gogh's decision to copy his graceful prints in viscous oils. While
traditional Oriental culture might have demanded that a student acknowledge a
master for creating models worthy of imitation, it did not threaten the student
with legal sanctions for copying such models, even badly. Like the Chinese
scholar Shen Zhou before him, Hiroshige might have thought: ". . . if my
poems and paintings, which are only small efforts to me, should prove to be of
some aid to the forgers, what is there for me to grudge about?" (Quoted
in William P. Alford, To Steal a Book is an Elegant Offense:
Intellectual Property Law in Chinese Civilization, Stanford University
Press, 1995, at 29.)
Suppose that one of
Hiroshige's heirs, holding his rights, sues Vincent van Gogh, his occasional
dealer Tanguy, or his brother Theo or sister-in-law Johanna, heirs who took
charge of works after his death. This hypothetical suit would be for copying
Hiroshige's prints and making Van Gogh's Japonaiseries available to the
public. This case is not posited to test the state of the French law of
author's rights in the late nineteenth century. Rather it shall serve as a
thought-experiment to elucidate a basic dilemma common to all copyright law.
2. The Copyright Dilemma
The field of copyright
has distinct dimensions. One dimension concerns individual creators and their
works. Here we may ask: Are Hiroshige's rights in his works infringed by Van
Gogh's studies? The other dimension concerns disseminating works to the public.
Here the question becomes: Should the court grant Hiroshige or his heir
remedies against the dissemination of Van Gogh's studies?
These dimensions, though
distinct in theory, are intertwined in practice. Creators elaborate works in
communicating with colleagues and critics, patrons and promoters, and larger
publics. Technology has progressively globalized the communication networks
into which creators have fed their works. To assess this progress, start with
the fact that, two millennia ago, the
Creations are thus fed
back into cultural networks at varying rates. The art worlds of modern
This rate of feed-back
is critical to the rationale of intellectual property. Farmers would be
reluctant to market produce that was promptly stolen once it went on sale. But
the law recognizes property in the fruits of the farmers' labor and polices the
marketplace for thieves. Similarly, authors and inventors would seem to lose
incentives to release their products of mind into the marketplace if, in the process,
they found such products used by free-riders. Instead, armed with intellectual
property, they are supposedly induced to feed more works and inventions back
into communication networks, thus further stimulating culture and technology.
Such feedback helps to achieve policies that have been formulated, for example,
in terms of "the Progress of Science and useful Arts." (U.S.
Constitution, art. I, § 8, cl. 8.)
Should the law then
allow Hiroshige or his heir to stop Van Gogh from making studies of Hiroshige's
works and Van Gogh's heirs from feeding the resulting new works back into world
culture? If, on the one hand, we provide creators with no legal control over
the fate of their creations, they might be reluctant to input such public goods
into cultural networks. If, on the other, we provide them with too much
control, we allow them to stop others from elaborating on these products of
mind and feeding still further creations back into such networks. If the rules
on point are too lax, copyright becomes ineffectual; if the rules are too
stringent, such property becomes counter-productive.
Let us restate the
dilemma doctrinally. Copyright arises out of creative acts: Hiroshige has
copyrights in the prints he creates, and Van Gogh has them in the studies he
creates. In principle, copyrights, so-called properties, entitle creators to
dispose of their respective works at will; however, in our hypothetical suit,
such rights could well conflict. That is, Hiroshige's right in a print could,
without regard for others, lead to stopping Van Gogh or his heirs from
exercising his subsequent right to dispose of his study. But the fact that
Hiroshige's work comes first ought not be decisive for the simple reason that,
unlike patent law, copyright law does not favor works because of priority in
time. The follower, Van Gogh, may further invoke freedoms of creation and
expression.
Courts, when faced with
a hard case such as ours, seek equitable solutions. They are like Goldilocks
who, in the home of the three bears, wanted porridge that was neither "too
hot" nor "too cold." The court may well ask: Does any equitable
or policy-based defense, sometimes a provision setting forth an apparent
exception, excuse arguable infringement? In the
True dilemmas are not
always resolved by Goldilockean compromises. Nor is it just a matter of simply
reconciling particular older and younger creators' claims, but of resolving the
dilemma consistently with basic copyright rationales. While such doctrines as
fair use and free utilization are idiosyncratic to particular copyright laws,
and specific exceptions vary considerably between all these laws, infringement
analysis is common to all such laws. Accordingly, in approaching the common
dilemma of copyright scope, only infringement analyses common to the major
copyright systems will here be considered.
3. Creating Works: Infringement?
Asking when infringement
takes place engages analysis along the dimension of creation. It focuses on the
works of individuals: on the one hand, the work of an earlier creator, for us
Hiroshige, whose heir is our plaintiff; on the other, the work of a later
creator, for us Van Gogh, our defendant. It is a matter of comparing the older
and younger authors' works.
a. Creative Options; Sliding-Scale
Analysis
Courts avoid our dilemma
in easy cases, where they are faced with only literal or close copies. Such
copies, displaying little or nothing new above and beyond the works copied,
cannot in themselves enrich the creativity that feeds culture. The dilemma
becomes acute, however, when it is a matter, not of obvious copies, but rather
when prior works are admitted to be the bases of later works that are therefore
alleged to be infringing.
In the eighteenth
century, copyright was instituted to deal only with easy cases, the pirate
reprinting of books or restaging of plays. At the start of the nineteenth
century, courts typically found no infringement in what leading French commentary
called "[t]he transmutation of form that the translator causes the
original to undergo." (Augustin-Charles Renouard, Traité des droits
d'auteurs, Jules Renouard et Cie., 1838-39, vol. 2, at 37.) But as trade in
books became increasingly globalized, authors and publishers started to claim
rights to stop translations in foreign markets. Rights then began to expand
beyond protecting any work against substitution in the markets that work
targeted. The right to control deriving one work from another emerged to reach
new markets in new media. That right now comes into play, for example, when
literary works are staged or filmed.
In hard cases, when
plaintiffs allege that defendants have derived works from their own, courts
often resort to complementary doctrines. Asking what is protectible, courts may
not protect "facts" or "ideas," but rather only
"expression"; assessing infringement, courts ask whether plaintiff's
work is copied in defendant's "substantially" similar work or whether
"essential" or "characteristic traits" are taken. But such
notions as "ideas" defy ready definition, and equally metaphysical
notions of "substance" suggest that works of the mind are things like
tables and chairs, consistently perceived by all audiences, but none of these
doctrines by itself guides courts to consistent decisions. For example, in a
suit for infringement of Gone with the Wind by the novel The Blue
Bicycle in
Courts may be said to
"filter" factually or idea-determined materials out of the scope of
what is protectible. For example, in one French case, a researcher sued a
writer for taking vocabulary from his scholarly works on Cajun culture to use
in a novel set in a Cajun locale. But the trial court found no infringement in
the use of such culturally typical expressions that it considered to be
indispensable to giving the novel "a minimum of verisimilitude." (T.G.I.
Paris, 1re ch., Jan. 16, 1991, 148 RIDA 180 (1991), aff'd, CA Paris, 1re
ch., Jan. 14, 1992, 152 RIDA 198 (1992).) Moreover, to the extent that there is
only one way, or very few ways, to convey facts accurately, for example, in
lists, charts, etc., resulting expressions may not be protected. Obviously,
there can be just one correct spelling and numbering for each listing in a
telephone directory and only a few conventional signs for situating sites on
maps. More generally, the scope of protection narrows to the extent creative
options are either too restricted to allow for creative elaboration or
indispensable for subsequent creation.
Courts often have
difficulty deciding how coarsely or finely to filter out factually or
idea-determined materials. It is not always easy to specify at what point a set
of creative options is too restricted or indispensable to allow for protection.
For example, in one case in the
In easy cases, courts
find infringement in the full reconstruction of plaintiff's work in a literal
or close copy. In hard cases, the question remains open: how much of the
"substance" of a work must be re-generated before there is
infringement? Since creativity is protean, standards of protection, such as
"originality" or "creativity," are satisfied to varying
degrees from case to case. In the
Unfortunately, judicial
penchants can push and pull on such analysis. For example, in one German case,
the courts, generous to a plaintiff, indulged the premise that standard
industrial-drafting techniques allowed for injecting sufficient personal
creativity into a technical drawing to protect it against close copying. (Explosionszeichnungen
decision, BGH, Feb. 28, 1991, 1991 GRUR 529.) In another German
case, judicial sympathies favored the defendant: the image of a female nude
ingeniously posed by the innovative fashion photographer Helmut Newton was at
issue, but a painting which creatively transformed that image, albeit
recognizably, was found not to infringe Newton's copyright. (Power of Blue
decision, OLG Hamburg, Oct. 12, 1995, 1996 ZUM 315.)
One commentator notes
the opening for possibly inconsistent results: "The outcome in a given
case might well be that, while the plaintiff's work could be protected against
outright piracy by a third party, it does not receive protection as against
defendant's work that incorporates parts of it less obviously or more
creatively than any slavish copy." (François Dessemontet,
"Switzerland" § 8[1][a], in International Copyright Law and
Practice, edited by P.E. Geller, Matthew Bender & Co., 1998, vol. 2.)
b. A New Framework for Infringement
Analysis
How to respond to these
analytic vagaries and judicial ambivalences? Let us start by limiting the sense
of "idea" to the statutory terms of any "procedure, process,
system, [or] method" for generating works. (17 U.S.C. § 102(b) (1998).)
Aristotle provides us with a classical example, explaining the idea of tragedy
in just such operational terms: have a hero commit an act of hubris, and
have him fall and discover his own fall, to accomplish a catharsis of pity and
fear in the audience.
Next, let us situate our
operational notion of "ideas" within a larger framework of analysis.
Our notion encompasses a wide range of procedures and methods for generating
works. At one end, distinguish as routines those information-processing
procedures that leave little or no room for creative options. Moving forward
from that starting point, we can distinguish the following processes along a
spectrum from copying to creation. Once drawn, these distinctions will be
illustrated in terms of the extent to which the processes can be satisfactorily
computerized.
At the start of the
spectrum, rote copying results from applying a single set of identified
routines to a work. For example, to copy a text literally, with the same
wording, we might change fonts, using as many routines as there are printing
symbols, plus some others to reformat the text. Or, to copy an image closely,
we might trace it out on transparent paper, or we might photocopy it, laying it
into the photocopy machine, setting the desired number of copies and other
parameters, and pressing the button. Either way, a given set of identified
routines suffices to obtain a copy.
There are many different
processes in the middle of the spectrum. The rubric of knowledgeable
reworking seems to cover most of them. Such processes use routines that are
generally known, but not necessarily all identifiable. Nor need the set of such
routines used in a given case fully suffice to determine the entire work
generated in that case. Consider translating a French cookbook into English: it
is necessary to rely on lexical and syntactic routines known, sometimes only
implicitly, by bilingual speakers. For example, while French usage regularly
places adverbs between verbs and direct objects, English-speakers most often relocate
the adverbs, usually to the beginning or end of clauses. In any event, a
straightforward cookbook, if not almost every work-a-day text, is susceptible
of only a slightly variable set of translations likely to be acceptable to
bilingual speakers. As other examples of mid-range processes, consider
selecting and organizing facts into a compilation, or excerpts into an
anthology, or recontextualizing a work, as in appropriation art.
At the far end of the
spectrum, there is innovative recasting. Here, no known set of routines
suffices for moving from one work to another or even to comparable works.
Consider the enterprise of translating James Joyce's Ulysses into
French: at hundreds of thousands of points, the translators had to make choices
that linguistic rules alone could not have dictated. The saxophonist Charlie
Parker provides another example: starting from the chords of the tune Cherokee,which
an accompanying guitarist had inverted just "to keep a beat going,"
he moved into an entirely new mode of jazz improvisation. (Quoted in Ira
Gitler, Swing to Bop: An Oral History of the Transition in Jazz in the 1940s,
Oxford University Press, 1985, at 69-72.)
At the start of the
spectrum, rote copying can be automated. When a photocopy machine copies an
image, a microprocessor in the machine executes a complex set of routines. Rote
copying comes about for the simple reason that, before formalizing these
procedures in any computer algorithm, the programmer must have identified them
all. Imagine a more complex case: a computer, digitally recording audio input,
for example, a musical work, converts all the sounds of that work into video
output, which is screened as moving visual patterns. The computer program
effectively reprocesses the musical work, its rhythms, melodies, chords,
timbres, etc., visually by playing these materials out as lines, light and
dark, colors and values, etc., all moving in space and time, apparently as an
abstract cinematic work. Assume, too, that the algorithm used here is in an
off-the-shelf program, which the party making the conversion does not
creatively supplement, say, through interactive input. The result, despite the
distinct audio and video forms, is rote copying.
Moving further along the
spectrum, mid-range processes such as knowledgeable reworking can only be
partially automated. For example, an expert system can be used to help with the
translation of a text, but the routines of such systems succeed with variable
confidence factors in translating all but the simplest texts. These factors
represent the probabilities that the expert system will translate given
passages to the satisfaction of bilingual speakers, and they can vary depending
on the difficulty of any given passage and the languages in question. Such
variability will arise even in using an expert system to translate a work-a-day
text like our hypothetical cookbook from French to English, both closely
related languages that share largely common roots. It will every so often prove
necessary to call upon the implicit knowledge of bilingual speakers to decide
between proposed translations that are arguably acceptable or equally
debatable.
At the far end of the
spectrum, innovative recasting largely defies automation. Suppose that a text
to be translated, like our example of James Joyce's Ulysses, breaks
systematically with most cultural precedents. As Umberto Eco emphasizes, such a
work can challenge us "to rethink the whole language, the entire
inheritance of what has been said, can be said, and could or should be
said." (A Theory of Semiotics, Indiana University Press, 1976, at
274.) Innovative recasting is needed to translate Joyce's novel into French,
since no bilingual consensus provides rules to guide translation at most points
in this seminal English text. Of course, run-of-the-mill works can also be
innovatively recast, as when popular tunes became fodder for modern jazz.
A word of caution is
called for at this point. Infringement analysis need not look to the actual
genesis of the works in question. It is rather a matter of ascertaining to what
extent there were routines available to move from plaintiff's to defendant's
work at the time of the later work. To the extent that available routines did
not suffice, it may be inferred that the allegedly infringing work arose thanks
to processes that ranged from knowledgeable reworking to innovative recasting.
The computer metaphor, just used, provides merely one way to think about such a
determination. Expert testimony, as explained below, will often be helpful in
making the requisite findings.
c. Application: Hiroshige's and Van
Gogh's Works
Our framework of
analysis ostensibly applies no matter what type of work is at issue. But, once
again, there is a difficulty that arises from protean creativity, which
manifests itself in the ever-proliferating diversity of media and genres. Let
us then initially test our framework of analysis by asking whether it can be
cogently applied to diverse types of works. After that, we can apply it to the
works of Hiroshige and Van Gogh in question here.
On the one hand,
literary works are coded in discrete terms, such as words and phrases, arranged
pursuant to grammatical rules. On the other, artistic works are embodied in
continuously variable materials such as line, space, light, and color,
configured in space. In computer terms, a literary work can be generated using
a lexicon like the ASCII code and a sequencing or syntactic program, while an
artistic work can be more or less faithfully bit-mapped. The same distinction
can be reconceptualized as applying between works repeatably readable from
texts and works uniquely embodied in objects.
This distinction admits
of both border-zone and hybrid cases. For example, a musical work is more like
a literary work when it is written down in a score, but it moves into a border
zone, where it becomes more like an artistic work, when it is performed.
Chinese poetry forms a hybrid case when written in calligraphic form: no
translation into an alphabetic language, no matter how creative, can render the
resonance of such a poetic text with its visual form. How can a court assess
where works fall along the spectrum of creative processes, given that works
tend to be so diversely situated relative to the basic distinction between
literary and artistic works?
In a literary work, like
a novel, it is a matter of analyzing, most notably, how the text is
sequentially translated into another language or sequentially adapted into
another medium or genre. For example, Dashiell Hammett's detective story The
Maltese Falcon was made into John Huston's film by dramatizing it into
dialogue, acting instructions, etc., and by visually elaborating it into sets,
action, camera work, etc. Making Hammett's text into a screenplay required
knowledgeable cuts and adjustments to fit the story into cinematic constraints.
Huston moved up the spectrum toward innovative recasting in the ways he shot,
paced, and edited the film.
By contrast, it is often
a subtle matter to analyze how one artistic work is transformed into another.
The materials of such a work, for example, graphics, palette, etc., can be so
packed together, its visual signals so saturated, that they become inextricable
to the untrained eye. Nelson Goodman, whose philosophical analysis is seminal
here, gives the example of a print by Hokusai, in which "[a]ny thickening
or thinning of the line, its color, its contrast with the background, its
size," would change the entire impact of the work. (Languages of Art:
An Approach to a Theory of Symbols, Hackettt Publ., 1976, at 229.)
Against that background,
return to our initial thought-experiment: From Hiroshige's prints, Van Gogh
makes his studies in oil, the Japonaiseries. Of necessity, Hiroshige's
Starting from Oriental
models, Hiroshige's space hints at classic Western perspective and anticipates
Impressionism as well. His print The Plum Garden moves the eye back from
more intensely colored foregrounds to paler backgrounds, while Van Gogh's study
The Tree scrambles all such inherited visual signals, for example,
drawing our eye under the red sky and bursting yellow blossoms into a
constricted space punctuated by angular tree trunks. A leading expert is
categorical about the revolutionary step Van Gogh is taking beyond the
Impressionism which formed the background for his mature work: "The result
is a kind of explosion that opens the way to Expressionism." (Klaus
Berger, Japonisme in Western Painting from Whistler to Matisse,
translated by D. Britt, Cambridge University Press, 1992, at 131.)
Contrast another pair of
works: Hiroshige's print Sudden Shower over the Great Bridge near Atake with
Van Gogh's study The Bridge. The older artist clearly blocks out
a simple Spring shower which falls on passers-by who are walking across a solid
bridge planted in a placid river. The younger artist brushes in driving rain, a
bridge uneasily suspended on moody pilings, and a turbulent river, all with the
tensions of a raging storm. Our expert wonders "what the unfortunate
people in the picture have done to deserve such an elemental onslaught." (Id.
at 132.)
Is Hiroshige's copyright
infringed by Van Gogh? On the spectrum starting at rote copying and including
knowledgeable reworking, Van Gogh ultimately reaches the stage of innovative
recasting. It would, however, oversimplify matters to declare in the abstract
which of these processes infringes copyright and which does not. To resolve the
dilemma of copyright scope, it will prove necessary to distinguish more finely
between their legal consequences.
4. Disseminating Works: Remedies
Available?
It is time to change
from the dimension of creation to that of dissemination. If the court orders
Van Gogh to stop painting his studies, it nips dissemination in the bud. If it
orders Van Gogh's heir not to display these studies, it stops dissemination in
its tracks. The impact of awarding money to Hiroshige's heir will depend on the
amount of the award.
a. Property versus Liability Remedies
It is helpful at this
point to distinguish between property and liability regimes. When a court is
ready to order you off someone else's land, whenever you set foot on it, a
property remedy is available. When the court merely holds you liable to pay money
after you have already trespassed, a liability remedy is imposed. The optimum
mix of property and liability remedies will vary according to the branch of
intellectual property and the case.
Our dilemma arises
precisely because Hiroshige may claim property, not merely in the prints he
created, but in the later studies Van Gogh created of those prints. Hiroshige's
property claim would be most decisively implemented in an injunction to
preclude Van Gogh or his heirs from exercising any further property claim to
dispose of his later work freely. As already pointed out, however, not only
does copyright law not contain any principle, as does patent law, favoring any
initial creator because of priority in time, but it is subject to freedoms of
creation and expression. In reaching an appropriate mix of remedies, it will be
argued, a court may resolve our dilemma, while avoiding conflicts between prior
and later creators' claims.
Typically, under
copyright law, the mix of remedies has erratically varied from case to case.
This variation has in part arisen because the doctrines limiting copyright
scope, such as the idea-expression distinction and substantiality criteria of
infringement, have been neither uniform in meaning nor coherently articulated.
Furthermore, in considering remedies, courts have to take account of equitable
considerations that change from case to case, for example, the force of the
parties' initial showings, the eventual impact of proposed remedies on the
parties' respective positions, etc. It is submitted that courts should fashion
and coordinate property and liability remedies within a framework of analysis
such as that proposed here. Here are some guidelines:
1. No injunction or other coercive remedies
should be issued against whoever makes a solitary copy exclusively for private
enjoyment or study.
2. Courts should (a) always be ready to enjoin
and otherwise provide coercive relief against rote copying for the public, (b)
exercise discretion in granting injunctions and other coercive remedies
concerning works generated by mid-range processes such as knowledgeable
reworking, and (c) refrain from enjoining innovative recasting, as well as the
dissemination of the new works thus generated, absent strong equitable reasons
for stopping them.
3. Courts may (a) impose the full range of
monetary awards, including statutory or other special damages used for punitive
or deterrent purposes, in cases of rote copies, especially when these are
marketed with scienter, but (b) adjust actual or statutory damages, or
reasonable royalties or profit shares, to the market interests at stake in any
other case.
How would these
guidelines apply to our hypothetical suit? Assume that the court finds that
Hiroshige's prints are innovatively recast in Van Gogh's Japonaiseries. First,
no order would be issued to stop the making of these studies privately; second,
no order would lead to seizing these studies or enjoin publicly displaying or
marketing them. Third, a money judgment could still be obtained for such marketing,
and it would be measured by considering how Hiroshige's prints contributed to
the appeal that Van Gogh's studies would hold for relevant audiences.
Our dilemma would be
resolved: neither creativity nor feedback into cultural networks would be blocked,
while both prior and later creators' rights would be protected on the
marketplace. Having just glanced at how our guidelines come together, let us
now look at how they may apply more particularly in other hard cases.
b. Applications to Different Remedies
Works of authorship
display different creative processes in endlessly variable combinations and
permutations. As a result, the guidelines just proposed would still lead to
different mixes of remedies from case to case, although hopefully with more rhyme
and reason than before. Some comments are in order on how to reach optimum
mixes in complex cases. At the level of injunctions and other coercive
remedies, there is an obvious difficulty. A framework has been proposed for the
sliding-scale analysis of infringement. But how does it help in making
all-or-nothing decisions, notably whether to enjoin or not?
Courts and legislators
have to avoid invading privacy, whether of creators or of end-users of works.
Refraining from coercive relief against private copying avoids the risks both
of intimidating the timid muse that inspires creation in private and of
violating constitutionally protected privacy interests. For example, the law
does not stop computer programmers from making private copies of programs to discover
methods and codes underlying these programs. Privately made studies are also
indispensable for younger artists who conduct research into artistic methods in
copying older works. They need freedom to get the knack of such methods
manually as well as in inspecting the works visually.
Faced with public
dissemination, courts protect copyright owners' markets by seizing infringing
copies and by stopping copying, showings, sales, etc. It has been proposed that
discretion to issue such orders be exercised with an eye to where plaintiff's
and defendant's works fall along the spectrum of creative processes. Courts are
most ready to enjoin or seize literal or close copies, almost always rote
copies, that threaten markets the copied work targets but that bring nothing
new into the marketplace. In mid-range cases, where knowledgeable reworking
generates translations, adaptations, etc., discretion has to be exercised to
balance risks to protected markets against risks to the feedback of new
content. For example, the Ninth Circuit thought it inappropriate to enjoin the
film Rear Window when that work turned out to be subject to renewal
rights in the short story on which it had been based. Such an injunction would
not have advanced the right-holder's market interests, and it made little sense
to deny "the public the opportunity to view a classic film for many years
to come." (Abend v. MCA, Inc., 863 F.2d 1465, 1479 [9th Cir. 1988],
aff'd, 495 U.S. 207, 236 [1990].)
The difficulty at the
level of monetary awards is not so obvious. It would seem that such awards can
be easily adjusted within our framework of sliding-scale analysis. After all,
the court can award more or less money to plaintiff depending on how massive or
marginal defendant's taking is found to be. It is not so simple, since the
measures of monetary awards are diverse: some are granted for punitive or
deterrent purposes; some, to compensate plaintiff for usurped markets or other
damages; some, to recover defendant's undue gains. For punitive or deterrent
purposes, many courts may assess monetary awards, especially statutory or other
special damages, at levels beyond the market interests at stake in the cases
before them. There is no risk that the prospect of paying such extraordinary
damages might discourage the release of new creations when they are levied
against rote copies, for the simple reason that such copies feed nothing
creative into communication networks. But there is the risk that awards out of
proportion with market stakes might burden the feedback of new content in cases
where reworked or recast works are found to be infringing.
These cases call for
purely compensatory awards, notably damages, royalties, or profits, or else
statutory damages granted in lieu of such awards. The amount of any compensatory
award has to be gauged in the light of the relative impacts of plaintiff's and
defendant's works on the marketplace. It is easy enough to measure actual
damages in a case where plaintiff's work finds itself forsaken because
defendant's work merely serves as a substitute for it on the markets it
addresses. In other cases, plaintiff might not yet have put the work at issue
on the market or might not have had any market success, or the work might be
transformed by defendant into a derivative work that addresses different
markets, for example, as when a novel is adapted to film. The key here lies in
apportioning compensatory awards to the extent to which plaintiff's work
contributes to the appeal of defendant's on the marketplace.
Suppose, for example,
quite hypothetically, that no license had been obtained from Dashiell Hammett
to film The Maltese Falcon, as John Huston did. Not only would it not be
equitable, but it would undermine incentives to make and release the film, if
the writer were accorded all the film profits that would be otherwise
attributable to talented stars, cinematic direction and production, promotion,
etc. But the court may award Hammett reasonable royalties or shares of profits
for Huston's rather thorough-going use of his story, which partially accounts
for the abiding appeal of the resulting classic film noir, even while
the court factors out creative filming, etc., also contributing to that appeal.
c. Proof: the Audience Test
In the
Perhaps, all triers of
fact are tempted to act as test audiences when hearing infringement cases.
Whether applied by judges or juries, audience tests give rise to a pair of
related problems: first, not all triers of fact are sure to emulate accurately
the responses of the relevant audiences; second, it is not always obvious who
should constitute the relevant audience. To take an example of the first
problem, imagine a case in which a poem is allegedly translated: to ascertain
whether there is translation, much less how the appeal of the original poem
finds its way into the translation, the trier of fact must itself be bilingual
or hear testimony from an expert who knows the languages of both texts. As to
the second problem, it brings us back to the issue of copyright scope: the
extent of the markets reserved to plaintiff, along with the markets open to
defendant, will depend on just this issue. But collapsing all criteria of
relevant audiences into some notion of undifferentiated audience response only
obfuscates the issue.
An imaginary case,
introduced above, dramatizes the problem of emulating audience response: a
computer converts audio input into video output. It reprocesses plaintiff's
musical work, its rhythms, melodies, etc., into what seems an abstract
cinematic work, namely moving and colored patterns on screen. The defendant
who, without any interactive input, mechanically uses the computer, as well as
the conversion algorithm running the computer, engages in rote copying.
Nonetheless, the average judge or jury might not hear, and in turn not see,
much similarity in appeal between plaintiff's musical work and defendant's
ostensible cinematic work. As a result, a test merely asking the trier of fact
to emulate some lay listener's and ordinary observer's response might not lead
to any finding of infringement at all, much less damages. Return, for a moment,
to the example of the allegedly translated poem: there a bilingual expert could
explain to the trier of fact how linguistic rules do, or do not, account for
moving from plaintiff's text in one language to defendant's in another.
Similarly, in this imaginary case, an expert could focus the trier of fact on
how the conversion algorithm in the program generates, from plaintiff's musical
work, the full fabric defendant's ostensible cinematic work.
Consider a real case
which illustrates the problem of selecting relevant audiences. The artist Jeff
Koons instructed an art studio to make a sculpture, in a number of copies, of a
photograph of a couple holding a string of cute puppies. The sculpture, Koons
claimed, critiqued kitsch sentimentality typified in the photograph, but no
defense of fair use was allowed on that basis, and infringement was found. (Rogers
v. Koons, 751 F.Supp. 474 [S.D.N.Y. 1990], amended, on reh'g, 777
F.Supp. 1 [S.D.N.Y. 1991], aff'd, 960 F. 2d 301 [2d Cir. 1992], cert.
denied, 506 U.S. 934 [1992].) But from whose perspective would Koons' sculpture
so obviously constitute an actionable copy of the photograph, and whose markets
would it usurp, if any, for purposes of assessing damages? Plaintiff's
popular audience was not relevant to the extent that it did not buy the
sculpture rather than the photograph; defendant had a different, more
sophisticated art market, for whom his colored, three-dimensional sculpture
slyly, knowledgeably, reworked the black-and-white, two-dimensional photograph
at issue. For that market, did the appeal of defendant’s sculpture in any way
derive from plaintiff's photograph? An expert might well testify that any
equally banal image could have been appropriated for that purpose. On that
basis, the result would colorably have been no damages at all.
5. A Caveat and Conclusion
We started with a
hypothetical suit. At issue were Hiroshige's wood-block prints. Relief was
sought against Van Gogh's studies in oils of these prints. This case dramatizes
the dilemma implicit in all cases where prior works form bases for later works.
On the one hand, denying relief would ignore copyright rationales altogether;
on the other, overly stringent remedies could betray these rationales.
We have here reframed
infringement analysis with an eye to resolving this dilemma. But our framework
is not definitive, but merely an attempt to pull together various strands of
infringement analysis in diverse copyright systems. Furthermore, all
infringement analysis has to look to current culture for its premises
concerning creative processes, aesthetic perceptions, and economic realities.
Indeed, as a creature of our culture, copyright law can only proceed critically
from just such premises in the light of its own basic rationales. No doubt,
future aesthetic and economic insights will help to reconceptualize
infringement analysis in new and better forms.
With that caveat in
mind, a pair of points should be stressed in concluding. On the level of
theory, courts need better analytic tools than shifting sets of vague and
disparate tests and criteria of protectability and infringement. The attempt to
bring underlying doctrines together into some coherent framework of analysis at
least helps to debug corresponding tests and criteria and to optimize
infringement findings and remedies in the cases. On the level of practice,
courts ought not content themselves with simply finding infringement vel non
but, in hard cases, would do well to discern more finely how plaintiffs' works
are reworked or recast into defendants' works. In that light, it is submitted,
they could grant remedies more consistently with copyright rationales.