Opinion
98 Civ. 7128 (BSJ), 98 Civ. 7129 (BSJ), 98 Civ. 7130 (BSJ)
November 28, 2001
AMENDED OPINION
The only change from the original Opinion appears on page 14, line 8, where the court has substituted the word "copyrighted" for the word "uncopyrighted."
INTRODUCTION
Plaintiff, Video-Cinema Films, Inc. ("Video-Cinema") filed these actions against Defendants, Cable News Network, Inc. ("CNN"), American Broadcasting Companies, Inc. ("ABC") and CBS Corporation ("CBS"), alleging copyright infringement in violation of 17 U.S.C. § 101 et seq., violation of the Lanham Act, 15 U.S.C. § 1125 (a), and common-law unfair competition for their nationwide broadcasts of excerpted footage from the motion picture The Story of G.I. Joe ("G.I. Joe") on their news programs after the death of actor Robert Mitchum ("Mitchum"). Defendants move for summary judgment. For the reason set forth below, Defendants' motions are granted.
Plaintiff has withdrawn its Lanham Act claims against Defendants. Accordingly, this Court hereby dismisses Plaintiff's Lanham Act claims.
THE PARTIES
Plaintiff Video-Cinema, a New York Corporation which licenses copyrighted motion pictures and their excerpts, owns the copyright ofG.I. Joe. Its President and sole shareholder is Larry Stern ("Stern").See Plaintiff President's Affidavit in Opposition to [ABC's motion for] Summary Judgment ("Stern Aff.") ¶¶ 1; 4; Deposition of Larry Stern ("Stern Dep.") at 11-13 (attached as Ex. 9 to ABC's Statement of Undisputed Material Facts).
Defendant CNN distributes news and information programming by satellite and cable distribution systems. It is composed of several 24-hour cable news networks, including CNN, CNN Headline News and CNN International.See Declaration of Pilar G. Keagy ¶ 6.
Defendant ABC operates the ABC Television Network, which among other things, distributes news programming for the viewing public. ABC distributes programming to its affiliates or approximately 190 independently-owned local television stations around the country and to ten local stations that are indirectly owned by ABC's parent, ABC, Inc.
ABC News is a division of ABC which produces a variety of daily news programming including news programming that principally is dedicated to brief reports of the current news. ABC News' programs include: World News Tonight with Peter Jennings, typically broadcast weekdays in the early evening; World News Now, a daily news program for late-night viewers, broadcast weekdays between 2:00 a.m. and 5:00 a.m.; and World News This Morning, broadcast weekdays between 5:00 a.m. and 6:00 a.m. In addition, ABC News broadcasts Good Morning America every weekday between 7:00 a.m. and 9:00 a.m. Good Morning America is a morning news and entertainment show with a variety of programming, including brief reports of the current news of the day, interviews, commentary, and feature programming. See Declaration of Griffith Foxley ¶¶ 3-4; Affidavit of Eileen Murphy ¶¶ 3-4.
ABC News also operates Newsone, a news video wire service. Newsone distributes television news stories, including some news stories broadcast on ABC News programs, to subscriber news organizations. Most Newsone subscribers are ABC affiliates and the local stations indirectly owned by ABC's parent company. The subscribers may only use the Newsone provided stories on their local news programs, and only within 40 hours and/or once within a week of its distribution by Newsone. See Declaration of Don Dunphy, Jr. ¶¶ 3-6.
Newsone charges a weekly subscriber fee for all Newsone news broadcasts distributed that week. The fee is not related to the content of the news stories.
Defendant CBS, a television and radio broadcasting corporation, is the indirect parent of CBS Broadcasting, Inc. which operates the CBS Television Network. The CBS Television Network distributes programming to its affiliates and to 16 local television stations owned and operated by CBS. CBS News is a division of CBS Broadcasting Inc. which produces news programming for the CBS Television Network, including CBS This Morning (currently The Early Show) and Up to the Minute, its overnight news program show. These shows principally are dedicated to stories that occurred within the previous 24 hours or "day-of-air" stories. CBS also operates CBS NewsPath, a satellite television news "wire" service that distributes breaking news programming to subscribers, most of whom are CBS affiliates or the local stations owned and operated by CBS Broadcasting Inc. See Declaration of Helen M. Gold ¶¶ 2-4; Deposition of Andrew M. Sturchio at 16-17; 19; 45-56; 48.
FACTS
The following facts are undisputed or taken in light most favorable to Plaintiff. G.I. Joe is a 108 minute long World War II motion picture about American infantry soldiers as seen through the eyes of Ernie Pyle, the famed World War II correspondent. It starred Burgess Meredith as Ernie Pyle. Mitchum played a supporting role as Lieutenant Walker for which he received an Academy Award nomination for Best Supporting Actor. G.I. Joe was released in 1945 in theaters across the United States. Since then, it has been shown in its entirety on television on numerous occasions. Plaintiff's Purchase of G.I. Joe
G.I. Joe was produced in 1945 by Lester Cowan. It was originally copyrighted on August 17, 1945 and filed in the Copyright Office at L-13455, with the renewal dated November 20, 1972 and filed with the Copyright Office at R 540453. Cowan passed the copyright by his the Last Will and Testament, dated September 28, 1991, to his wife Ann Ronell, who, in turn, bequeathed it to the University of Southern California ("USC") by her Last Will dated September 5, 1991. See Stern Aff. ¶¶ 7; 11.
This was Mitchum's only Academy Award nomination.
Although Stern is "familiar with every aspect of [G.I. Joe's] history since its creation" and was the distributer of the television photoplays, he does not know "with factual certainty" the number of timesG.I. Joe has been broadcasted on television. See Stern Aff. ¶¶ 9-10. Nonetheless, he testified that the movie probably had been shown on television over 50 times. See Stern Dep. at 33-34.
On July 1, 1997, Mitchum passed away. Prior to then, beginning in early 1997, Stern had begun negotiating with U.S.C. to purchase G.I. Joe, as well as two other films. As of July 1, 1997, the parties had exchanged various proposals, but no agreement had been reached. Nonetheless, Stern, anticipating that news organizations would air Mitchum obituaries containing clips from G.I. Joe, spent approximately 10 hours in front of two television sets that evening and the next morning, flipping through news broadcasts and the morning shows of seven VHF television stations to determine what stations were showing clips from G.I. Joe in their obituaries. While doing so, he measured "the extent of the infringing uses of G.I. Joe" with a wrist watch and made notes of each time he saw a clip of G.I. Joe in a Mitchum obituary. He saw obituaries containing G.I. Joe clips on 6 out of the 7 stations he watched. See Stern Aff. ¶¶ 13-14; Stern Dep. at 53-59; 214-17; 237-41; 263-68; Continued Deposition of Larry Stern ("Stern Dep. II") at 5-9; 21-27 (attached as Ex. 10 to ABC's Statement of Undisputed Material Facts); Declaration of Nathan Seigel Ex. H.
Stern believed that news organizations would run clips from G.I. Joe because it was the only movie for which Mitchum was nominated for an Academy Award. See Stern Dep. 216-17.
Thereafter, in September, 1997, Stern sent a revised draft contract proposal to U.S.C. — the first since he saw the obituaries. Apparently, this draft contained two new provisions granting Stern retroactive rights in the film to March, 1997, including the rights to bring any infringement claims available as of that date. This Court notes that prior to July, 1997, none of the exchanged draft proposals had contained provisions providing for the purchase of any retroactive rights. See Stern Dep. at 50-57; 244-46; 250-52.
Stern alleges that he informed U.S.C. that infringing clips ofG.I. Joe had aired on news broadcasts, and "USC gave [his] corporation the express right to pursue these infringements . . ." See Stern Aff. ¶ 15.
Ultimately, Stern purchased G.I. Joe, with the retroactive rights, as well as the other two movies. According to Defendants, the day Stern received the executed contract from U.S.C. he sent letters to approximately 12 different news organizations requesting payment (of $5,000 or 10,000 each) for use of G.I. Joe in their Mitchum obituaries. Some of these organizations had not even aired clips from G.I. Joe. All of the news organizations that had aired clips from the movie responded that the use of the clip was fair. See Stern Aff. ¶ 18; Stern Dep. at 87-88.
Defendants' Obituaries
CNN had prepared an obituary for Mitchum a few months prior to his death. The obituary lasted 2 minutes 50 seconds and detailed Mitchum's acting career as well as other newsworthy aspects from his life, including, among other things, his 57 year marriage to Dorothy Spence. The obituary used film clips from G.I. Joe and at least 8 other movies.
The clip from G.I. Joe was obtained from a Mitchum documentary entitled Robert Mitchum: The Reluctant Star, which the CNN journalist who prepared the obituary received from another reporter, who had purchased it from a video store.
During the middle of the obituary, a 17-second clip from G.I. Joe airs, without sound, as the correspondent states that "[un 1945 Mitchum earned an Academy Award nomination — his only one — for Best Supporting Actor in [G.I. Joe]." The clip then shows Mitchum speaking one line from G.I. Joe. CNN aired its Mitchum obituary approximately 10 times on its 3 networks between the afternoon of July 1, 1997 and the morning of July 2, 1997.
Upon learning of the news of Mitchum's death, ABC News prepared three obituaries for its daily news broadcasts — all of which were aired within 24 hours of Mitchum's death. Each obituary contained clips from 7-10 Mitchum films, including G.I. Joe. The G.I. Joe clips ranged from 9 to 20 seconds in length. The first obituary aired on World News Tonight With Peter Jennings at 6:30 p.m. EDT. It was 55 seconds long and contained a 9 second clip from one scene of G.I. Joe in which the camera focused exclusively on Mitchum. During the 9 second clip the movie's original sound was replaced by the anchor stating that "Mitchum was nominated for an Academy Award for his role in `The Story of G.I. Joe,' which launched him into stardom in 1945."
ABC's clip from G.I. Joe likewise was obtained from Robert Mitchum: The Reluctant Star, which ABC News had rented from a local video store. See Affidavit of Elizabeth Tribolet ¶ 8; Deposition of Kate O'Brian at 13-14.
ABC broadcast its second Mitchum obituary on July 2, 1997 at about 3:00 a.m. EDT on World News Now, and again at around 5:00 a.m. EDT. It lasted 1 minute 53 seconds and included an 18 second clip of Mitchum from G.I. Joe. The original sound was eliminated from 9 seconds of the clip while the correspondent explained that Mitchum "reached stardom in 1945 withG.I. Joe" for which "he was nominated for an Oscar as best supporting actor, but did not win." The other 9 seconds of the clip had Mitchum speaking one line from the film.
ABC's last Mitchum obituary aired on Good Morning America shortly after 8:00 a.m. on July 2, 1997. It was 1 minute and 44 seconds in length including a 20 second clip from G.I. Joe. Ten of the 20 seconds of the original sound were inaudible as the correspondent explained that "[Mitchum] found the most success when cast as a rugged military man. His 1945 portrayal of an Army captain in `The Story of GI Joe' earned him his only Oscar nomination.
Adding the length of the clips from the 3 different shows, Plaintiff states that the overall use of G.I. Joe by ABC was 47 seconds. Stern Aff. ¶ 12.
On July 12, 1997, Newsone distributed the ABC News Mitchum obituaries to its subscribers. It also distributed a Mitchum obituary that aired on KABC-TV, a Newsone subscriber. That obituary lasted 1 minute 40 seconds, including a 22 second clip of G.I. Joe, of which 11 seconds of the original sound was inaudible.
KABC-TV is not a Defendant to this lawsuit.
CBS prepared separate Mitchum obituaries containing clips of G.I. Joe for CBS This Morning and for Up To The Minute. CBS aired one of the Mitchum obituaries on Up To The Minute at 4:38 a.m. EDT on July 2, 1997. The obituary, which was 1 minute 59 seconds long, contained a 6 second clip of Mitchum's performance in G.I. Joe. During these 6 seconds, the sound from the original movie was replaced by the correspondent describing the significance of the film to Mitchum's career. Specifically, the clip airs in the middle of the obituary while the correspondent explained: "It was G.I. Joe that made him a star. His portrayal of Lieutenant Walker in the film earned him an Oscar nomination for best supporting actor." The obituary also explained other newsworthy aspects of Mitchum's life. It was rebroadcast at 7:38 a.m. EDT on July 2, 1997, for the benefit of CBS's West Coast affiliates, and was retransmitted on CBS NewsPath.
In doing so, the news producers obtained footage from Mitchum's films from the CBS News archives. Included in the archives was a tape of the 49th Annual Golden Globe Awards show, which contained a tribute to Mitchum for receiving the Cecil B. DeMille Award for outstanding contribution to the entertainment field. The Mitchum tribute contained an excerpt from G.I. Joe, among other films. CBS incorporated a portion of this excerpt into its Mitchum obituaries.
On July 2, 1997 at 7:48 a.m. EDT, CBS This Morning broadcast its Mitchum obituary. The obituary lasted for 1 minute 53 seconds and included a 14 second clip from G.I. Joe. During the first 9.5 seconds of the clip, the original sound was muted while the correspondent noted that: "Mitchum's powerful performance as a rough but weary lieutenant in [G.I. Joe] earned him his only academy award nomination." The rest of the clip has Mitchum speaking one line from the movie.
Two shorter versions of the CBS This Morning obituary ran on the show at 7:01 a.m. and 7:11 a.m EDT. These obituaries, which were 16 seconds and 26 seconds long respectively, each contained an identical clip of less than 6 seconds from G.I. Joe, and did not use the audio from the original movie. The CBS This Morning obituaries were not rebroadcast by CBS or retransmitted by CBS News Path.
The Instant Motion
As previously noted, Stern sent letters to different news organizations, including Defendants, requesting payment for the use ofG.I. Joe in their Mitchum obituaries. All of the news organizations that actually had used clips of G.I. Joe in their obituaries responded that their use was fair. Thereafter, Plaintiff commenced this action for copyright infringement and unfair competition. Defendants now move for summary judgment on the grounds that the use of the clips from G.I. Joe was a fair use under 17 U.S.C. § 107.
This Court notes that no one who owned any copyright interests in any of the Mitchum clips from other films used in any of Defendants' obituaries ever objected to their use. The only complaint that Defendants ever received about the Mitchum obituaries came approximately 9 months later, in March, 1998, when Stern wrote letters to Defendants requesting a fee.
DISCUSSION
Plaintiff asserts that Defendants' arguments for their motions are based on unsworn documents containing allegations by counsel. Since under Rule 56(e) of the Federal Rules of Civil Procedure, summary judgment motions must be supported by the personal knowledge of a declarant or affiant, and not by statements from counsel, Plaintiff argues that Defendants motion should be denied. Plaintiff's argument is without merit. It is clear from reading the declarations and affidavits that they are made from the personal knowledge of the declarant or affiant. Indeed, all of these sworn statements state that the undersigned is familiar with the facts of this action. To the extent that Plaintiff's argument is that Defendants' sworn documents must contain the words "personal knowledge," it is unavailing. See Texaco A/S. S.A. v. Commercial Ins. Co. of Newark, 1995 WL 628997 at *2 (S.D.N.Y. 1995), rev'd on other grounds, 160 F.3d 124 (2d Cir. 1998). Furthermore, this Court notes that Defendants' attorneys' declarations do not contain allegations in support of their motions, but simply attach exhibits in support of their statements of facts and memoranda of law.
The Copyright Claims
For purposes of this motion alone, Defendants do not contest the validity of Plaintiff's copyright in G.I. Joe. Accordingly, this Court will assume that Plaintiff's copyright is valid.
The Copyright Act grants copyright owners certain exclusive rights, including the right "to reproduce the copyrighted work in copies." 17 U.S.C. § 106. Notwithstanding this, "the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright." 17 U.S.C. § 107. Thus, the fair use doctrine permits the reasonable use of copyrighted materials, without the permission of the copyright owner, as long as it is for one of the purposes enumerated in § 107. Maxtone-Graham v. Burthehell, 803 F.2d 1253, 1255 (2d Cir. 1986); see Leibovitz v. Paramount Pictures, 137 F.3d 109, 112 (2d Cir. 1998).
"Fair use is a mixed question of law and fact." Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir. 1991) (citing Harper Row, Pub., Inc. v. Nation Enterprises Inc., 471 U.S. 539, 560 (1985)). Nonetheless, courts can resolve fair use determinations on summary judgment motions. Id. "`[T]he mere fact that a determination of the fair use question requires an examination of the specific facts of each case does not necessarily mean that in each case involving fair use there are factual issues to be tried.'" Id. (citations omitted).
Whether use of the copyrighted material is fair requires a case-by-case determination "within the context of the four nonexclusive factors enumerated in section 107." Wright, 953 F.2d at 735 (citing Harper Row, 471 U.S. at 549). These factors are:
(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.17 U.S.C. § 107. While, Defendants have the burden of proving that their potentially infringing use was fair, see Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104, 107 (2d Cir. 1998), Defendants need not establish that all of the factors favor them. See Wright, 935 F.2d at 740. In addition, no one of the above factors is dispositive to this Court's analysis.
Before analyzing the fair use factors, however, this Court first addresses Plaintiff's assertion that, under Roy Export and Harper Row, any use of copyrighted material must be essential or an actual necessity to qualify as fair use. Specifically, Plaintiff argues that because Defendants could have obtained still photos of Mitchum from the public domain and used them for their obituaries, Defendants' fair use defense must fail. This Court disagrees. As correctly noted by Defendants, neither Roy Export nor Harper Row stand for that proposition. See Roy Export Company Establishment of Vaduz, Liechtenstein v. Columbia Broadcasting System, Inc., 672 F.2d 1095, 1099-1100 (2d Cir. 1982); Harper Row, 471 U.S. at 555-560. In fact, the portion of the opinions on which Plaintiff relies do not address the fair use doctrine. See id. Instead, they are concerned with whether there exists a First Amendment privilege to use copyrighted material beyond what is permitted by the fair use doctrine, which for the purpose of this Court's analysis is irrelevant. See Roy Export, 672 F.2d at 1099-1100; Harper Row, 471 U.S. at 555-560.
Purpose and Character of Use
The first fair use factor is the purpose and character of Defendants allegedly infringing use. To determine the purpose and character of the use, this Court must consider whether the material was used for one of the purposes set forth in § 107, and whether it was used for a meaningfully different or "transformative" purpose than the original.Campbell v. Acuff-Rose Music, 510 U.S. 569, 579 (1994). In addition, although far from dispositive, this Court should consider whether Defendants are for-profit or not-for-profit entities. Id.
First, Defendants clips of G.I. Joe were used in connection with news reports of the death of Mitchum. Thus, they were used for one of the purposes set forth in § 107. It is well settled that where the Defendants' use is for one of the purposes set forth in the statute, there is a strong presumption this factor favors the alleged infringer.Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1077 (2d Cir. 1992) (citing Wright, 953 F.2d at 737). Indeed, the Second Circuit has stated that "`[i]f a [work] falls into one of these categories . . . assessment of the first fair use factor should be at an end.'" Wright, 953 F.2d at 736 (citations omitted).
Second, in order to determine whether a work is transformative, this Court looks to whether the new work "adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Campbell, 510 U.S. at 579 (citations omitted). This Court finds that the obituaries are transformative works as they do not intend to supersede G.I. Joe, but rather to create a new work. See Hofheinz v. AMC Productions 2001 LEXIS 1591 at *25 (E.D.N Y 2001). Simply stated, Defendants' use of the clips from G.I. Joe was for an entirely new purpose and character than the original film. While Plaintiff's copyrighted work intended to entertain its audience, as well as to inform them of the reality that American infantrymen faced in World War II, Defendants' obituaries aimed to inform the viewing public of Mitchum's death and educate them regarding his impact on the arts. See id.;Hofheinz v. A E Television Networks, 146 F. Supp.2d 442, 446-47 (S.D.N.Y. 2001). Moreover, defendants' clips were used because of their relevance to Mitchum and not to convey a synopsis of the original film. Just as parody must mimic the original work to make its point, and biographers are permitted to quote their subjects, so too should obituaries about actors be allowed to show reasonable clips of their work. Hofheinz, 2001 LEXIS 1591 at *26 (citing Campbell, 510 U.S. at 580-81; New Era Publications, Int'l v. Carol Pub. Group, 904 F.2d 152, 156 (2d Cir. 1990) ("New Era II")).
For Instance, CNN's clip of G.I. Joe has Mitchum telling a soldier to dig a latrine.
Finally, this Court should consider the fact that Defendants are for-profit entities. Plaintiff argues that this fact weighs against a finding of fair use. This Court disagrees. As previously noted, the commercial nature of Defendants is not dispositive for finding against fair use. See Campbell, 510 U.S. at 584. Courts should look to see whether the new work will be used for a purpose favored by the statute rather than Defendants' status as a for-profit entity. Id. (if "commerciality carried presumptive force against a finding of fairness, the presumption would swallow nearly all of the illustrative uses listed in the preamble paragraph of § 107 . . . since these activities `are generally conducted for profit'"). This is true especially where, as here, the new work is transformative in nature. Id. at 579 (noting that the more transformative a new work, the less significant will be the other factors, such as commercialism, that may weigh against a finding of fair use); see also Arica 970 F.2d at 1078; Infinity Broadcast Corp., 150 F.3d at 108. Otherwise, as correctly noted by Defendants, the fair use doctrine would be limited to not-for-profit entities. Arica 970 F.2d at 1078.
In sum, based upon the above, this Court finds that the purpose and character of the obituaries favors a finding of fair use.
Nature of Copyrighted Work
When analyzing the second factor, courts look to whether the original work previously had been published and whether it is fictional. Creative works are entitled to greater copyright protection than factual works. Here, it is undisputed that G.I. Joe is a fictional work. Although this weighs against a finding of fair use, it is not dispositive. See e.g.,Leibovitz, 137 F.3d at 115 (finding fair use although the original work was creative).
G.I. Joe was published through both the release of the film to the public and its appearance on television numerous times. See Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 591 (2d Cir. 1999); Hofheinz, 2001 LEXIS 1591 at *27. Since Defendants did not usurp the first publication rights in G.I. Joe, they enjoy a slightly wider degree of latitude in making their fair use claim. See Hofheinz, 2001 LEXIS 1591 at *27 (citing Campbell, 510 U.S. at 586); see also Harper Row, 471 U.S. at 564 (noting that unpublished works are entitled to greater protection than published works); New Era Publications Int'l v. Henry Holt Co., 873 F.2d 576, 583 (2d Cir. 1989). Indeed, the Second Circuit has found that where the plaintiff's work has already been published, this fact alone supports a finding of fair use under the second statutory factor. See Arica, 970 F.2d at 1078. Based upon the above reasoning, this court finds that the second factor is neutral or, at best, slightly favors a finding against fair use.
Plaintiff argues that under the 1909 Copyright Act (which, according to Plaintiff, governs), G.I. Joe was not "generally published," but rather only had a "limited publication." That distinction is irrelevant to the fair use doctrine, which is concerned only with whether the work has been published at all. See Harper Row, 471 U.S. at 555. By contrast, the distinction between "general" and "limited" publication concerns whether a work that existed prior to the 1976 Act was published in a manner which divested it of any form of copyright protection, or published in a manner whereby it still enjoyed common law copyright protection. See Estate of Martin Luther King v. CBS Inc., 194 F.3d 1211, 1214 (11th Cir. 1999).
Amount and Substantiality of Portion Used
The third factor looks to "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." 17 U.S.C. § 107 (3). This factor has both a "quantitative and a qualitative" aspect to it. Wright, 953 F.2d at 738 (internal citations omitted). Thus, this Court must consider whether the clips formed a significant percentage of the original film, as well as whether the clips were essentially the heart of the film. See id. at 738; New Era II, 904 F.2d at 158. Courts also have considered "whether the quantity of the material used was `reasonable in relation to the purpose of the copying.'" American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 926 (2d Cir. 1994) (citing Campbell, 510 U.S. at 586).
The length of the clips used by Defendants were far from substantial, especially in comparison to the overall length of the film. Indeed, the clips ranged from 6 to 22 seconds, or less than 1 percent, of the 108 minute long film. Such de minimus amounts of a full-length feature film favor a finding of fair use. See Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., 166 F.3d 65, 71 (2d Cir. 1999) (stating that a "[d]e minimis infringement of a copyrighted work is not actionable"); Hofheinz v. A E Television Networks, 146 F. Supp.2d at 448.
As previously noted, Plaintiff states that this court should consider the aggregate length of the clips used by the individual Defendants. See supra at 9 n. 9. For instance, according to Plaintiff, ABC's total use was 47 seconds. This Court has considered the total use of the clips and finds that it does not change the result.
The Second Circuit consistently has found fair use in cases where only a small portion of the original work was used. See Leibovitz, 137 F.3d 109; Arica, 970 F.2d at 1079; Wright, 953 F.2d at 740; New Era II, 904 F.2d at 59; Maxtone-Graham, 803 F.2d at 1263.
Nor do the clips constitute the "heart" of the film. Taking the heart of a work means taking the key informational or creative component that serves as a substitute for the original. See Harper Row, 471 U.S. at 564-65. This is not the case here. Plaintiff argues that the scene from which ABC and CBS took their clips was the essence of G.I. Joe because it was an important scene in which Mitchum's character is in a dugout talking to Burgess Meredith's character, Ernie Pyle about sending death notices to soldier's mothers. However, the information that Plaintiff claims makes this scene important was not conveyed by the small fraction of the scene used by ABC and CBS. The clips gave no indication that Mitchum was discussing writing letters to dead soldiers' mothers, or even that the film had anything to do with Ernie Pyle. Nor can CNN's clip — a scene in which Mitchum tells a soldier to dig a latrine — be described as the heart of G.I. Joe.
Finally, Defendants' use was reasonable in relation to the purpose of the copying. Defendants' obituaries sought to effectively detail Mitchum's career — a task which required some exhibition of actual movie clips. See Hofheinz, 2001 LEXIS 1591 at *31. The clips used by Defendants related solely to Mitchum's performance and did not distill or reflect the entire movie. In addition, the original sound was completely inaudible for some of the clips and partly eliminated in the others. Based on the above, this Court finds that Defendants' use was reasonable to produce their obituaries. Accordingly, the amount and substantiality of clips in the obituaries favors a finding of fair use. Effect of Use upon Potential Market
Plaintiff contends that "the overall aggregate broadcasts must be considered" when analyzing this factor. This Court disagrees. This factor measures the extent of Defendants' use "in relation to the copyright work," 17 U.S.C. § 107 (3), not whether it was widely distributed.See Wright, 953 F.2d 731; Mathieson v. Associated Press, 1992 WL 164447 (S.D.N.Y. 1992).
The fourth factor focuses on the effect Defendants' use will have upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107 (4). This factor asks whether the challenged use competes with, by providing a substitute for, either the original copyrighted work, or derivative works that a copyright owner would traditionally expect to create or commission. New Era II, 904 F.2d at 159-60. In analyzing this factor, this Court must consider whether "widespread conduct of this sort would have a substantial impact on the market for the original." Campbell, 510 U.S. at 590; see also Harper Row, 471 U.S. at 566-67 ("`Fair use, when properly applied, is limited to copying by others which does not materially impair the marketability of the work which is copied.'") (citations omitted); Infinity Broadcast Corp., 150 F.3d at 110 (noting that this factor is concerned with the possible usurpation of a "market that properly belongs to the copyright-holder"). If the allegedly infringing use "is not in competition with the copyrighted use," the fair use defense is ordinarily sustained. Italian Books Corp. v. American Broadcasting Cos., Inc., 458 F. Supp. 65, 70 (S.D.N.Y. 1978).
Here, there is nothing before this Court that suggests that Defendants' obituaries competed with or reduced the market for Plaintiff's film. In fact, Stern himself acknowledged that the obituaries did not have an impact on the market for the entire original film. See Stern Dep. II at 40; 47-49; 63. This Court therefore finds that the alleged infringing clips "are too few, too short, and too small in relation to the whole" to undercut the market for the film. Monster Communications, Inc. v. Turner Broadcasting Systems, Inc., 935 F. Supp. 490, 495 (S.D.N Y 1996). Where, as here, Defendants have produced a transformative work that would otherwise qualify for fair use, and Defendant's work does not interfere with the market for the original, the fourth factor favors the defendant as a matter of law. See Leibovitz, 137 F.3d at 116-17.
Indeed, it is possible that the obituaries could have increased market demand for the film.
Plaintiff claims that it will be deprived of a licensing fee for the use of its film if Defendants' use is deemed fair. This argument, however, fails to establish market impairment under this factor. A copyright plaintiff "is not entitled to a licensing fee for a [use] that otherwise qualifies for the fair use defense." Leibovitz, 137 F.3d atsee Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 81 (2d Cir. 1997). In addition, since every copyright infringer who seeks to avail herself of the fair use doctrine potentially could have sought a license from the owner of the infringed work, Plaintiff's argument, if taken to its logical conclusion, would render this factor obsolete because it would favor the copyright owner in every case. See Ringgold, 126 F.3d at 81. The point of the fair use doctrine is that, in certain circumstance, such as the one before this Court, the law will not require an infringer of a copyrighted work to obtain such a license. See Rosemont Enterprises, Inc. v. Random House, Inc., 366 F.2d 303, 306 (2d Cir. 1966).
Moreover, even for non-transformative uses of entire works, consideration of licensing revenues is not permitted absent evidence that a regular traditional market exists for the specific use at issue. See Ringgold, 126 F.3d at 79. This Court finds that there is not a regular traditional market for obituaries. According to Defendants, between the three of them, only once in the last five years have they paid for a licensing fee for use of a film clip in obituaries. In addition, Defendants note that in Stern's 38 years in the industry, he has received only 3 other small settlement payments from other stations (to avoid litigation) for use of his clips in obituaries.
In sum, this court finds that the public would be hindered by denying Defendants' fair use defense. Defendants created obituaries that detail Mitchum's life and his impact on the arts. The obituaries contain information which, if the general public does not find interesting, at the very least, movie aficionados across the country will find informative. See Campbell, 510 U.S. at 578 n.l0. Accordingly, the fourth factor also favors a finding of fair use.
Having considered the four factors set forth in the 17 U.S.C. § 107, this Court holds that the balance of factors favors a finding of fair use. See Wright, 953 F.2d at 740 (district court correctly granted defendants summary judgment where three of the four factors clearly favored the defendants); Leibovitz, 137 F.3d 109; Arica 970 F.2d 1067. Accordingly, Defendants' motions for summary judgment on Plaintiff's copyright claims are granted.
The Unfair Competition Claims
Defendants' summary judgment motions for Plaintiff's unfair competition claims are granted as well. Plaintiff's unfair competition claims are based on the same conduct as its copyright claims, and thus are preempted by federal law. See Oboler v. Goldin, 714 F.2d 211, 213 (2d Cir. 1983);see also Richard Feiner Co., 10 F. Supp.2d 310, 316 (S.D.N.Y. 1998) ("Section 301 of the Copyright Act provides for preemption of all state claims that are tantamount to those falling within the scope and subject matter of copyright").
CONCLUSION
For the reasons set forth above, Plaintiff's Lanham Act claims are DISMISSED. Defendants' motions for summary judgment are GRANTED. The Clerk of the Court is ORDERED to close these cases.
SO ORDERED: