DR. SEUSS, THE JUICE AND FAIR USE: HOW THE GRINCH SILENCED A PARODY

45 J. Copyright Soc’y USA 546 (1998)

I. INTRODUCTION ............................................ 546

II. THE IMPORTANCE OF PARODY AND SATIRE ..................... 548

III. DEVELOPMENT OF THE FAIR USE DEFENSE FOR PARODY .......... 564

A. Basic Principles of Copyright Law .................. 564

B. Case Law Prior to 1976 ............................. 571

C. Case Law Under The Copyright Act of 1976 ........... 574

D. Campbell v. Acuff-Rose Music, Inc................... 580

1. Purpose and Character of the Use ............... 580

2. Nature of the Copyrighted Work ................. 583

3. Amount and Substantiality of the Portion Used .. 583

4. Effect upon the Potential Market or Value ...... 584

E. Case Law Subsequent to Campbell .................... 584

IV. DR. SEUSS ENTERPRISES V. PENGUIN BOOKS USA, INC.......... 585

V. A CRITICAL ANALYSIS OF THE NINTH CIRCUIT'S OPINION ...... 589

A. Fair Use Defense to Copyright Claim ................ 589

1. Purpose and Character of the Use ............... 590

2. Nature of the Copyrighted Work ................. 599

3. Amount and Substantiality of the Portion Used .. 600

4. Effect upon the Potential Market or Value ...... 604

5. Balancing the Factors .......................... 615

B. Trademark and Dilution Theories of Protection ...... 620

VI. CONCLUSION .............................................. 633

I. INTRODUCTION

Every Who down in Whoville liked parody a lot;

But the Ninth Circuit Grinches, with jurisdiction over

*547 Whoville, did not!

They were hostile to parody, whatever the season.

Please don't ask why; no one quite knows the reason.

It may have been that their ties were too tight,

Or perhaps their heads weren't screwed on just right.

But I think that the most likely reason of all

Was that their sense of humor was two sizes too small.

For nine months in 1995, media coverage of the O.J. Simpson double-murder trial transfixed the nation. The trial also gave rise to an astonishing number of books examining every possible aspect of the case, from biographies of the various personalities involved to post-hoc explanations of the verdict and its impact on or reflection of society. By one estimate, more than 60 volumes have already been published concerning the Simpson case. [FN1]

Given the amount of information available about the Simpson case, the loss of one additional book to a court injunction may seem like a relatively minor matter. But this one book was like no other: it was a satirical account of the O.J. Simpson trial written in the style of Dr. Seuss. Entitled The Cat NOT in the Hat! and labeled "A Parody By Dr. Juice," the book recounted the events of the trial in simple and repetitive rhyming phrases like those used in The Cat in the Hat and 46 other children's books written by Theodor S. Geisel under the pseudonym Dr. Seuss. The Cat NOT in the Hat! was illustrated with thirteen depictions of a cartoon caricature of O.J. Simpson, also in the style of Dr. Seuss, wearing the Cat's distinctive red-and-white stovepipe hat.

Based on a pre-publication advertisement, Dr. Seuss Enterprises filed suit against the authors and publishers of the parody, claiming that it violated the Copyright Act, the Lanham Act, the Federal Trademark Dilution Act, and California Unfair Competition law by using copyrighted expression and registered and unregistered trademarks belonging to the plaintiff. [FN2] The District Court entered a preliminary injunction against the *548 defendants, holding that the plaintiff had demonstrated a likelihood of success on the merits of its copyright claim, and that the trademark claim presented serious questions for review and the balance of hardships favored the plaintiff. [FN3] On an interlocutory appeal, the District Court's rulings were affirmed by the Ninth Circuit in a published opinion. [FN4]

In this article, I will demonstrate that the Ninth Circuit's opinion was incorrect, both as a matter of law and as a matter of public policy. In its opinion, the Ninth Circuit misapplied controlling U.S. Supreme Court precedent in holding that The Cat NOT in the Hat! was not a parody and was not a transformative use; in holding that the defendants were limited to that copying necessary to "conjure up" the original; and in presuming that the defendant's commercial parody would cause harm to the potential market for the original and licensed derivatives.

Part II of this article will discuss the social importance of parody and the related forms of burlesque and satire. Part III will briefly review the development of the parody defense to copyright infringement, with particular attention to the U.S. Supreme Court's 1994 opinion in Campbell v. Acuff-Rose Music, Inc. [FN5] Part IV will summarize the Ninth Circuit's opinion in the Dr. Seuss case, while Part V will offer an alternative analysis explaining how the Ninth Circuit erred in enjoining publication of The Cat NOT in the Hat!

II. THE IMPORTANCE OF PARODY AND SATIRE

Although seemingly straightforward, the task of defining parody can be maddeningly elusive. Many authors have commented on the difficulty of defining parody [FN6] and the related forms of burlesque [FN7] and satire, [FN8] and of *549 the inadequacy of various dictionary definitions. [FN9] At times, one is reminded of Justice Stewart's famous dictum concerning pornography: "I know it when I see it." [FN10] Nonetheless, in order to apply copyright law to parody intelligently, it is necessary to attempt to reach a working definition of the term "parody," and to understand how parody is related to both burlesque and satire.

To begin, the Oxford English Dictionary defines parody as follows:

A composition in prose or verse in which the characteristic turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous, especially by applying them to ludicrously inappropriate subjects; an imitation of a work more or less closely modelled on the original, but so turned as to produce a ridiculous effect. [FN11]

*550 This definition emphasizes two aspects of parody: first, that parody relies on imitation to achieve its purposes; and second, that parody may aim to ridicule a particular author or work.

When defined in this manner, parody can be considered to be merely a specific form of burlesque. [FN12] In the United States, the term "burlesque" is used chiefly to refer to a form of vaudeville entertainment featuring broad, ribald comedy, dancing and striptease; [FN13] but in England, "burlesque" retains its original meaning of any type of comic or derisive imitation. [FN14] Thus, the Oxford English Dictionary defines burlesque as a "species of literary composition ... which aims at exciting laughter by caricature of the manner or spirit of serious works, or by ludicrous treatment of their subjects." [FN15] Even in England, however, the relationship between parody and burlesque is not precisely defined. Some authors use the two terms more or less interchangeably, the principal distinction being that parody imitates a specific original work, while burlesque includes imitation of an author's general style or of an entire genre of works;[FN16] while others add the further limitation that parody involves applying the style of a particular work (or author) to a relatively trifling or less worthy subject. [FN17]

*551 More recent scholarship, however, has charged that the uncritical association of parody with burlesque has resulted in a marginalization of the former art. [FN18] In her definitive work, [FN19] Professor Margaret Rose emphasizes that the word "parody" derives from the ancient Greek word "parodia," which was first used to describe mock-epic poems in the style of Homer, but which came to include many different forms of comic quotation and textual rearrangement of prior works. [FN20] The word "burlesque," by contrast, is of more recent origin and was derived from the Italian word "burla," meaning joke or ridicule. [FN21] Because of its emphasis on comedy, the art of burlesque generally has been treated as little more than a diverting amusement by the literary elite. [FN22] Thus, according to Rose, "the relegation of parody to a sub-category of the burlesque in the eighteenth century" resulted in many of "the negative connotations attributed to parody in recent centuries," [FN23] and to its dismissal as "a lowly comic form which had been of little real significance in the history of literature or of other arts." [FN24]

*552 The dismissal of parody and burlesque as comedic arts with little lasting value, however, fails to convey the complexity of parody as a literary phenomenon, and the importance of both parody and burlesque as vehicles for literary and social criticism.

The complexity of parody is implicit in its etymology. The Greek word "parodia" is comprised of two roots: the prefix para-, meaning both similar to (as in parallel), and in opposition to (as in paranormal); and the noun "ode," meaning a song or verse poem. [FN25] The word "parodia" therefore implies a work that is both similar to and in opposition to the original. [FN26] At its finest, parody "imitates and then comically transforms other works in ambiguous and often complex meta-fictional ways." [FN27] For example, parodists may use imitation of the original "to elicit the expectations of their audience for a text, before presenting another version or view of it." [FN28] By playing upon the audience's expectations, the parody can simultaneously present an exemplar of the original work, the parodist's comment upon the style and/or subject matter of the original, and the parodist's comment upon the expectations of the reader or audience.[FN29] In Rose's words:

Whatever our attitude toward comedy, the complicated structure of more sophisticated parody -- in which the target text may not only be satirised but also "refunctioned" -- nonetheless demonstrates a more subtle (though still comic) use of other literary works than is implied by the term burlesque .... [T]he use of parody may aim both at a comic effect and at the transmission of both complex and serious messages .... [FN30]

In transforming an original work through comic imitation, parody can therefore reveal that the original may itself be susceptible to multiple interpretations or contain hidden layers of meaning.

Although parody may contain a variety of messages, it is most frequently used as a form of literary criticism. [FN31]The best parodies exaggerate*553 the weakest features of the original work in order to expose its inadequacies, [FN32]and thereby to encourage subsequent authors to abandon the overworked cliches and excesses of the original in their own works. [FN33] Such criticism may take the form of comic incongruity between the subject matter of the parody and the style used to depict it. [FN34] Incongruity reveals the faults and flaws of the original work by allowing the reader to focus on the style of the original divorced from its subject matter. The critical effect of such parodies is heightened by the parodist's deadpan seriousness in depicting the most ludicrous of subjects. [FN35] By turning an author's own words against him, parody and burlesque often prove to be more effective in stimulating artistic reform than more traditional methods of criticism. [FN36]

*554 Parody may also use comic imitation as a vehicle for social criticism. [FN37] Many of the most effective parodies target not only the parodied text but also the societal values and mores of the audience that has made the original popular.[FN38] Comic incongruity can also be used to target serious topics by depicting them in a frivolous or lighthearted manner, as is often true of political satire. [FN39] The parody form is used in order to demonstrate the pervasive influence of accepted political thought upon a well-known piece of popular culture, [FN40] and to make the parodist's criticism more palatable to the audience by mixing it with humor. [FN41] Because of its topicality and humor, "[o]ften a parody is more powerful in its influence on affairs of *555 current importance -- politics, for instance -- than an original composition." [FN42]

When viewed in this manner, both parody and burlesque are considered to be specific forms of satire. [FN43] The Encyclopedia Britannica defines satire as an "artistic form ... in which human or individual vices, follies, abuses, or shortcomings are held up to censure by means of ridicule, derision, burlesque, irony, or other methods." [FN44] In common with other authorities, however, the Encyclopedia also recognizes that literary satire is merely one manifestation of a universal human impulse toward mockery of every type. [FN45] Thus, the Encyclopedia also defines satire more generally as:

*556 [A] mocking spirit or tone that manifests itself in many literary genres but can also enter into almost any kind of human communication. Wherever wit is employed to expose something foolish or vicious to criticism, there satire exists, whether it be in song or sermon, in painting or political debate, on television or in the movies. In this sense, satire is everywhere. [FN46]

In a similar vein, scholar George A. Test has defined satire in terms of four elements that are present in varying combinations: aggression or attack, play (both wordplay and game-playing), laughter, and judgment or criticism. [FN47]Test uses this four-part structure to evaluate how various forms of satire are related to one another. Thus, while some parodies may be content with eliciting laughter through play, [FN48] the best parodies use play and laughter to convey more-or-less aggressive judgments, either about the artistic worth of the imitated work or about the society that values it. [FN49]

According to Test, parodic imitation is "used in two basic ways by satirists":

*557 One is to attack the specific form itself, its style, manner, structure, and content and thereby the ideas, attitudes and values expressed or represented. The other use is as a conveyance for satirizing what satirists usually attack, that is, persons, institutions, behavior, and ideas. In the first instance the satirist is making an aesthetic and usually a moral judgment that involves the technique and form of presentation. In the second case the form or manner becomes a tool for the satirist and not an object of mockery. [FN50]

As will be seen, some courts have seized upon such distinctions and have drawn a dichotomy between imitation that targets a particular work (labeled "parody") on the one hand, and imitation that targets some other aspect of society (labeled "satire") on the other. [FN51] This approach presents at least two serious difficulties from an artistic point of view. First, it "assumes that a distinction can be made between style and content, between manner and structure, without losing sight of the intimate and ultimately interdependent nature of the two," [FN52] thereby imposing a false dichotomy upon what is actually a continuum of imitative usage. Second, it assumes that courts can definitively determine an author's intent in writing a particular work, a task that many literary scholars argue is both foolish to attempt [FN53] and impossible to achieve. [FN54]

*558 Two additional salient features of parody are worth noting. First, parody is unabashedly a parasitic art. Its existence depends upon the well- known predecessors from which the parodist borrows, and upon the audience's familiarity with those models. In describing parody as a form of satire, Test states:

Both approaches require the reader to know a style, manner, form, set of conventions, a pattern exterior to the satiric work, in order to understand and fully appreciate the satire. The satirist uses the prior knowledge of the audience and the presumed ability of those in the audience to detect the incongruity, contradiction, or incompatibility between what they know of the original style or form and what they perceive before them. [FN55]

Consequently, "the truest parodies are those that tamper least with the material they are spoofing. Just enough to blow them sky-high. That's all." [FN56]

Second, because parody depends upon audience recognition of its models, the window of opportunity for the parodist is often extremely short in duration. In order to make its satiric point, a parody must appear while the targeted work is still fashionable and current in the minds of the audience. Test explains:

The works and forms that a satirist can appropriate are theoretically endless, but in fact the minds and memories of the audience imposes limitations on what the satirist can choose from. Audiences in the last quarter of the twentieth century are less and less familiar with biblical and classical literature and more or better acquainted with the artifacts of commerce, popular culture, and government ... [FN57]

*559 Consequently, a legal doctrine that restricts the ability of the parodist to borrow from contemporary works necessarily shackles the parodist's ability to comment upon contemporary culture. [FN58]

Because parody and satire are often used to attack powerful and popular political and social institutions, [FN59] they sometimes provoke responses of indignation and outrage from the audience. [FN60] Whenever this happens, calls for censorship inevitably follow. [FN61] Many authors have been called upon to defend themselves against charges stemming from their satires, [FN62] and history demonstrates that parodists and satirists are often among the *560 first victims of a dictatorship. [FN63] Indeed, it has been argued that parody, burlesque and satire can only flourish in a free democracy, [FN64] and that the relative amount of parody and satire permitted can be used an indicator of the political freedom of a society. [FN65] It is noteworthy that parody first came to prominence in ancient Athens, where authors enjoyed a great deal of freedom despite attacks from some public officials. [FN66]

The extreme measures taken to silence parody and satire demonstrate the power of these art forms to bring about social change. [FN67] Film director Taylor Hackford explains:

Holding up the most powerful institutions and individuals in society to sardonic scrutiny is a time-honored practice. It is used to ensure that those with great influence and power, at the very least, risk embarrassment if they abuse the trust we invest in them. [FN68]

*561 Even considered purely as artistic forms, however, parody and satire are deserving of legal protection. [FN69] In Test's words:

What does all this satire accomplish? A modern aesthetic Pilate might ask, what does art accomplish? For whatever else it is, satire is art, however peculiar and baffling it may be .... [And] were the disposition for satire somehow to disappear from the makeup of human beings, and the variegated expressions of it were to vanish, the dance of life would be diminished by the absence of a strange and vital gesture. [FN70]

The importance of parody as art can be demonstrated by the wide variety of authors whose parodies have enriched the world's literature and culture, from the Greek comedies of Aristophanes [FN71] to Cervantes' Don Quixote [FN72] and the comedies of Moliere. [FN73] In England, Chaucer, [FN74] Shakespeare, [FN75] Ben Jonson, [FN76] Francis Beaumont, [FN77] George Villiers, [FN78] Alexander *562 Pope, [FN79] Jonathan Swift, [FN80] John Gay, [FN81]Henry Fielding, [FN82] Richard Brinsley Sheridan, [FN83] Jane Austen, [FN84] Lord Byron, [FN85] William Thackery,[FN86] Lewis Carroll, *563[ FN87] Gilbert & Sullivan, [FN88] George Bernard Shaw, [FN89] James Joyce, [FN90]and Tom Stoppard [FN91] all wrote parodies; prominent parodists in the United States include Mark Twain, [FN92] Bret Harte, [FN93] Robert Benchley, [FN94] James Thurber, [FN95] E.B. White, [FN96] and Richard Armour. [FN97] In the late 20th Century, *564 parodies have flourished on television [FN98] and in motion pictures, [FN99] as those media began to replace literature as the primary focus of popular culture. Parody is also prominent in both music and the visual arts. [FN100] Although many of these parodies have outlived the works that inspired them, and therefore much of their critical humor is lost on modern audiences, their collective impact on the development of literature and the arts cannot be underestimated. [FN101]

III. DEVELOPMENT OF THE FAIR USE DEFENSE FOR PARODY

A. Basic Principles of Copyright Law

U.S. copyright law has its basis in the Patent and Copyright Clause of the Constitution, which provides:

The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. [FN102]

*565 As the Supreme Court has recognized, this clause reflects the view that the public welfare in artistic works will be maximized by the provision of an economic incentive to authors:

Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music and the other arts. The immediate effect of our copyright law is to secure a fair return for an author's creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good. [FN103]

"The monopoly created by copyright thus rewards the individual author in order to benefit the public." [FN104]

It has been recognized, however, that a rigid application of the copyright statute would sometimes stifle the very creativity that the law is designed to foster. [FN105] Implicit in the notion of "progress" is the idea that one must be able to study and build upon what has gone before. Science and the arts progress by incremental degrees, by criticizing, refining, synthesizing, reinterpreting, and occasionally rejecting, the theories and styles that are currently accepted or fashionable. Zoologists must be free to use the accepted system of scientific classification; it would be absurd if each author had to come up with his or her own system from scratch. Historians need to review the findings and interpretations of others in order to place their own contributions to the historical debate in context. Those who study and practice law construct their persuasive arguments using quotations from treatises, articles and reported cases. Those who study literature need to quote excerpts from the works of others in order to make their criticisms of those works comprehensible. Composers and painters traditionally have used themes from other works as a point of departure in creating their own works. In short, "[e] very book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before." [FN106] If copyright could be used to *566 prevent such borrowing, innovation in science and the arts would cease to exist. [FN107]

Thus, "[f]rom the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright's very purpose." [FN108] In the absence of legislative guidance, courts were left with the difficult task of balancing the level of copyright protection that would provide authors and publishers with a sufficient economic incentive to create new works, on the one hand, while permitting sufficient freedom to those authors to draw upon the works of others in creating new works, on the other. Over time, courts developed two doctrines designed to achieve such a balance: the idea/expression dichotomy, which provides that copyright protects only an author's expression, and does not extend to any facts and ideas contained in the copyrighted work; [FN109] and the fair use doctrine, which permits a second author to copy a limited amount of expression from a copyrighted work in creating a new work. [FN110]

Curiously, the U.S. Supreme Court played an insignificant role in the early development the fair use doctrine. [FN111]Its first two attempts to address fair use ended in affirmances by an equally divided court, thus producing no written opinions. [FN112] Lower federal courts embraced the doctrine, however, and by 1961 fair use "was firmly established as an implied limitation on the exclusive rights of copyright owners." [FN113] Subsequently, when Congress enacted a comprehensive revision of the *567 Copyright Act in 1976, it codified the existing fair use doctrine in Section 107. As amended in 1992, that section reads:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, news reporting, 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, 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 relation 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.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all of the above factors. [FN114]

In light of this history, it is clear that "[f]air use should not be considered a bizarre, occasionally tolerated departure from the grand conception of the copyright monopoly. To the contrary, it is a necessary part of the overall design." [FN115]

The Supreme Court's first published opinion on fair use came in 1984. In Sony Corp. v. Universal City Studios, Inc.,[FN116] two movie studios sued Sony to enjoin sales of the Betamax videotape recorder, on the grounds that it was being promoted and used to infringe copyrighted movies. By a 5-4 vote, the Court held that the unauthorized home videotaping of broadcast movies for time-shifting purposes was a fair use. [FN117] Although the works were creative rather than factual, and were copied in their entirety, the majority reasoned that timeshifting was a noncommercial use, [FN118] and*568 that there was no demonstrated harm to the market for the copyrighted works. [FN119] Instead, timeshifting would allow more people to watch the television broadcast, which might lead to increased revenue from advertisers. [FN120]The dissent argued that fair use should be limited to "productive" uses that result in the creation of new works, rather than "reproductive" uses that simply act as a substitute for the original work. [FN121]

The following year, in Harper & Row, Publishers, Inc. v. Nation Enterprises, [FN122] the Court held, 6-3, that an unauthorized publication of excerpts from former President Gerald Ford's memoirs was not a fair use. Harper & Row had licensed Time Magazine to publish excerpts of Ford's memoirs one week before the book was shipped to stores. Working from a purloined copy of the manuscript, The Nation "scooped" Time by publishing an article containing key quotes from the book two weeks before its release. As a result, Time canceled its contract with Harper & Row. [FN123]

The majority first considered and rejected the defendant's First Amendment defense, holding that any free speech concerns in using copyrighted material were adequately addressed by the idea-expression dichotomy and the fair use doctrine. [FN124] The court then considered the four fair use factors listed in the statute. Although the use was for a traditional purpose, news reporting, [FN125] the majority held that the use was commercial and in bad faith, because "the user stands to profit from exploitation of the copyrighted material without paying the customary price." [FN126]The majority acknowledged that factual works could be more freely copied than works of fiction, but it ruled that because Ford's memoirs had not yet been published, the exclusive right of first publication outweighed the need to use verbatim quotes. [FN127] Likewise, the majority acknowledged that 300 words quoted were "an insubstantial portion" of the 200,000 word manuscript, but it approved the district court's qualitative assessment that "[T]he Nation took what was essentially the heart of the book." [FN128] Finally, the majority noted that the use had actually resulted in harm to the*569 market for prepublication excerpts of the work, i.e., the cancellation of the agreement with Time. [FN129]

Both Sony and Harper & Row could be cited as examples of the principle that "hard cases make bad law." [FN130]Both cases were complicated by unusual issues: in Sony, it was the extent to which a manufacturer could be held responsible for infringement by home users; [FN131] in Harper & Row, it was the fact that The Nation had used a stolen copy of the manuscript instead of waiting until after the book was published. [FN132] Perhaps as a result, [FN133] in both cases the Court's reasoning seemed to raise as many questions as it resolved. [FN134] Many of those questions were answered in 1994, however, by the Court's unanimous decision in Campbell v. Acuff-Rose Music, Inc. [FN135] That decision, which involved an alleged rap music parody of the popular song "Oh, Pretty Woman," is discussed in Part II.D., below. [FN136]

Many authors have explained "fair use" in economic terms, arguing that a court should find "fair use" only in cases of market failure. [FN137] Thus, for example, a court should permit fair use in cases in which the cost of *570 negotiating a license would exceed the benefit to the user or to the public that would be expected to result. [FN138] Permission to quote short excerpts from a work in biography or other scholarly work is an example. [FN139] Likewise, fair use should be permitted where the copyright holder tries to use the copyright to suppress the flow of information instead of for economic gain. [FN140] Examples include the use of a work in critical reviews [FN141] and parodies, [FN142] as well as in comparative advertising. [FN143] More generally, any use *571 which contributes to the creation of a new work without excessively diminishing the economic incentive provided to the original author should be considered a fair use.[FN144]

B. Case Law Prior to 1976

Although the roots of a parody defense based on fair use can be found in a handful of cases from early in the 20th century, [FN145] the first case to address the parody defense in detail was Loew's, Inc. v. Columbia Broadcasting System. [FN146] In Loew's, the author of the suspense drama Gaslight and the producers of the motion picture version of the play sued Jack Benny and CBS to enjoin the television broadcast of a parody entitled "Auto- light." [FN147] U.S. District Judge James M. Carter rejected Benny's fair use defense in sweeping terms:

*572 [W]e conclude that plaintiffs have a property right in "Gaslight" which defendant may not legally appropriate under the pretense that burlesque as fair use justifies a substantial taking; that parodized or burlesqued taking is to be treated no differently from any other appropriation; that as in all other cases of alleged taking, the issue becomes first one of fact, i.e., what was taken and how substantial was the taking; and if it is determined that there was a substantial taking, infringement exists. [FN148]

The Loew's opinion is badly flawed because of one major error: Judge Carter's refusal to concede that parody serves a legitimate fair use purpose. [FN149] His holding amounted to a complete rejection of the fair use defense for any parody, the sole inquiry being the substantial similarity test for infringement. Judge Carter also rejected Benny's argument that his taking had no economic effect on the original, stating that "[t]he mere absence of competition or injurious effect upon the copyrighted work will not make a use fair." [FN150]

*573 Not surprisingly, Loew's was immediately appealed to the Ninth Circuit. While the decision was pending, Judge Carter was given a chance to reconsider his views in another case involving a television parody. Columbia Pictures Corp. v. National Broadcasting Co. [FN151] involved Sid Caesar's parody of the movie From Here to Eternity, entitled "From Here to Obscurity." While Judge Carter stuck to his emphasis on the substantiality of the taking, he backed off somewhat from his view that a parody was entitled to no special consideration:

Since a burlesquer must make a sufficient use of the original to recall or conjure up the subject matter being burlesqued, the law permits a more extensive use of the protectible portion of a copyrighted work in the creation of a burlesque of that work than in the creation of other fictional or dramatic works not intended as a burlesque of the original.[FN152]

Judge Carter concluded that "[u]nlike Loew's, here there was a taking of only sufficient [sic] to cause the viewer to recall and conjure up the original," [FN153] and held in favor of NBC.

In the words of one commentator, Judge Carter's retreat "breathed some life back into the mangled body of parody."[FN154] Parody remained in critical condition, however, because less than a month later, the Ninth Circuit affirmed Judge Carter's harsh Loew's opinion in Benny v. Loew's, Inc. [FN155] The panel specifically approved Judge Carter's initial view that parody was to be treated no differently from any other taking, and reiterated that parody was "no defense" to infringement. [FN156] Defendants' argument that parody was a form of literary criticism was dismissed as "a parody on the meaning of criticism." [FN157] The decision was appealed to the U.S. Supreme Court, where it was affirmed by an equally divided court. [FN158]

*574 The parody defense remained in this troubled state until Berlin v. E.C. Publications, [FN159] which involved Mad Magazine's publication of satirical lyrics which could be sung to the tunes of 25 of the plaintiffs' copy-righted songs. The district court granted summary judgment to the defendants on 23 of the songs, finding that the parody lyrics were not substantially similar to the originals. [FN160] On appeal, the Second Circuit affirmed without difficulty:

[A]s a general proposition, we believe that parody and satire are deserving of substantial freedom -- both as entertainment and as a form of literary and social criticism .... At the very least, where, as here, it is clear that the parody has neither the intent nor the effect of fulfilling the demand for the original, and where the parodist does not appropriate a greater amount of the original work than is necessary to 'recall or conjure up' the object of his satire, a finding of infringement would be improper. [FN161]

The court was politely critical of the Ninth Circuit's opinion in Benny, noting that it had been widely criticized in academic commentary, [FN162] and holding that the taking in Berlin satisfied the "substantiality" test of Benny, "even if we were to find the rationale of that opinion persuasive." [FN163]

C. Case Law Under The Copyright Act of 1976

In 1976, Congress passed the first comprehensive revision of U.S. copyright law since the 1909 Act. The 1976 Act gave statutory recognition to the judicially developed fair-use doctrine for the first time. [FN164] Although parody was not listed among the illustrative uses in the statute, the legislative history of the 1976 Act expressly recognized that the "use in a parody of some of the content of the work parodied" could be a fair use. [FN165]

Despite the fact that the Section 107 was "intended to restate the present judicial doctrine of fair use, [and] not to change, narrow, or enlarge it in any way," [FN166] the guidelines that it provided were not followed *575 by the Ninth Circuit in the next important parody case, Walt Disney Productions v. The Air Pirates. [FN167] In Air Pirates, the defendants had published an underground comic book which depicted several Disney characters as "active members of a free-thinking, promiscuous, drug-in-gesting counterculture." [FN168] The district court, constrained by the restrictive opinion in Benny, granted summary judgment to the plaintiff. The Ninth Circuit affirmed, reinterpreting Benny in the process to clarify the distinction between fair use and infringement:

The language in Benny concerning the substantiality of copying ... [ [should be] understood as setting a threshold that eliminates from the fair use defense copying that is virtually complete or almost verbatim .... Benny should not be read as taking the drastic step of virtually turning the test for fair use into the test for infringement. [FN169]

The court added in a footnote that "in so construing Benny, we necessarily disagree with the dictum that parody is treated no different [sic] than any other taking." [FN170]

Having disposed of Benny's most troublesome holding, the court then adopted the "conjure up" test that had been used in both Columbia Pictures and Berlin. Unlike the court in Berlin, however, it interpreted the "conjure up" test as a limitation on how much of the original could be used. [FN171] Thus, the court found that "given the widespread public recognition of the major characters involved here, ... very little would have been necessary to place Mickey Mouse and his image in the minds of the readers." [FN172] The court also asserted that "an alternative that involves less copying is more likely to be available" when the object of the parody is a comic book rather than a speech or other literary work.[FN173] Finally, the court indicated its skepticism of the defendants' parodic purpose:

*576 Also significant is the fact that the essence of this parody did not focus on how the characters looked, but rather parodied their personalities, their wholesomeness and their innocence. Thus, arguably defendants' copying could have been justified as necessary more easily if they had paralleled closely (with a few significant twists) Disney characters and their actions in a manner that conjured up the particular elements of the innocence of the characters that were to be satirized. While greater license may be necessary under those circumstances, here the copying of the graphic image appears to have no other purpose than to track Disney's work as a whole as closely as possible. [FN174]

Unfortunately, the meaning of this convoluted paragraph is elusive at best. How could an artist "conjure up" particular "elements" of a cartoon character's personality without also conjuring up other elements? What more could the defendants have done to "conjure up" the innocence of Disney's characters in order to justify copying their appearance more closely? Is the court simply saying that the defendants' parody wasn't effective enough? It is clear that the Ninth Circuit felt that the Disney characters had been copied too closely under the circumstances, but it is unclear what, if anything, the defendants could have done to avoid a finding of infringement. [FN175]

Despite this impenetrable passage, however, the greatest failing of the Air Pirates opinion was its refusal to consider whether the defendant's parody would have usurped the demand for the original or licensed derivative works. [FN176]Instead, the court focused solely on the substantiality of the taking, to the exclusion of the other factors:

*577 Because the amount of defendant's copying exceeded permissible levels, summary judgment was proper. While other factors in the fair use calculus may not be sufficient by themselves to preclude the fair use defense, this and other courts have accepted the traditional American rule that excessive copying precludes fair use. [FN177]

In so holding, the court came perilously close to "virtually turning the test for fair use into the test for infringement," the very error for which it had criticized the Benny opinion.

In a footnote, the Air Pirates opinion also introduced an im