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60 U.S.P.Q.2d 1845
No. 00 CIV. 3802(HB).
United States District Court, S.D. New York.
Sept. 20, 2001.
This is the third in a trilogy of cases between Susan Nicholson Hofheinz ("Hofheinz") and various defendants, different in each case, concerning the use of clips from films owned by Hofheinz. Here, Hofheinz sued Discovery Communications, Inc. ("Discovery") for copyright infringement for its use of (1) three excerpts ("clips") from a trailer for the 1957 film "Invasion of the Saucermen" in the 1997 program, "Aliens Invade Hollywood," and (2) several clips from a trailer for "I Was A Teenage Werewolf" and "I Was A Teenage Frankenstein" in the 1996 program, "100 Years of Horror." Discovery moved for summary judgment on the grounds that its borrowing of "Invasion of the Saucermen" constituted "fair use," and because Hofheinz's claim concerning "100 Years of Horror" is untimely. For the reasons discussed below, Discovery's motion for summary judgment is granted in its entirety.
In a motion for summary judgment, the burden is on the moving party to establish that there are no genuine issues of material fact in dispute and that it is entitled to judgment as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Fed.R.Civ.P. 56(c). A dispute regarding a material fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Aldrich v. Randolph Cent. Sch. Dist., 963 F.2d 520, 523 (2d Cir.) (quotation omitted). The court resolves all ambiguities and draws all inferences in favor of the nonmoving party in order to determine how a reasonable jury would decide. Aldrich, 963 F.2d at 523.
Hofheinz alleges that defendant, without permission, used clips from "I Was A Teenage Werewolf" and "I Was A Teenage Frankenstein" in the program "100 Year of Horror." According to the affidavit of Heather Moran, the Director of Programming for "The Learning Channel," the operating division of the Discovery Channel that purchased and broadcast "100 Years of Horror," the program was broadcast in four segments over two nights, October 31, 1996 and November 1, 1996. The first two segments covered the Frankenstein and Dracula film genres, and the second two segments covered the Werewolf and Zombie genres. Discovery's programming records and the declaration of Laura Yager, Senior Counsel for Discovery, confirm Ms. Moran's testimony.
In her deposition, Hofheinz testified that she became aware of the unlicensed use of her film properties when she saw the clips of "I Was A Teenage Werewolf" and "I Was A Teenage Frankenstein" on television. "Yes, I saw it on television, on Halloween night I believe.....I was in my living room ... my husband was with me ."Prompted by what she had seen on television, Hofheinz wrote a letter to Discovery dated May 22, 1997 complaining of the unauthorized use.
The Copyright Act's statute of limitations bars civil claims for copyright infringement interposed more that three years after the claim accrues. 17 U.S.C. § 507(b); see Kregos v. Assoc. Press, 3 F.3d 656, 661 (2nd Cir.1993). For the purpose of the statute, a claim accrues when the plaintiff knows or has reason to know of the injury upon which the claim is premised. Merchant v. Levy, 92 F.3d 51, 56 (2nd Cir.1996). Since Hofheinz became aware of the alleged infringing uses not later than November 1, 1996, and did not commence the instant action until May 19, 2000, this claim is outside the limitations period and must be dismissed. Plaintiff's recent statement that her deposition testimony had been made "without her being totally certain of the facts" is not sufficient to create a material issue of fact as to the commencement of the statutory period. See Merchant v. Levy, 92 F.3d 51, 56 (2d Cir.1996) (it is a "well-settled rule in this circuit that a party may not, in order to defeat a summary judgment motion, create a material issue of fact by submitting an affidavit disputing his own prior testimony").
On March 24, 1997, the "Learning Channel," a cable company operated by Discovery, transmitted to its licensees the program "Aliens Invade Hollywood" ("Aliens"). The licensees subsequently cablecast "Aliens" on various dates between 1997 and 2000, the total number of which neither party has provided to the court.
"Aliens" is approximately an hour long (with commercials) and deals with the long-running popular fascination with the idea of alien visitations and presumed ensuing government cover-ups, as expressed in Hollywood films. "Aliens" traces the history of the alien visitation genre from "War of the Worlds" and other films of the 1940s and 1950s, arguably the genre's heyday, to more recent films like "Independence Day," and explores the possibility that aliens have visited the earth or will make contact in the future. To that end, "Aliens" used commentary by on camera narrators; interviews with scientists, people involved in moviemaking and special effects, putative abduction victims, and other "experts"; and clips from films and promotional trailers ("trailers"). Although "Aliens" ' treatment of alien visitation often falls short of scientific rigor, there is no question that the program is a documentary in style and substance, as opposed to a work of pure fantasy or fiction, and much of its commentary about the alien visitation genre would be of interest to any cinema buff, cultural historian or science fiction aficionado.
"Aliens" used three clips from a trailer for "Invasion of the Saucermen" ("Saucermen") comprising, collectively, 48 seconds of the film. Hofheinz does not have an independent registered copyright in the trailer. Two of the clips were a mere 8 seconds each, and the third was 32 seconds in length. The 32 second clip showed two army officers in the woods discussing an alien incident. The clip is introduced by special effects expert Robert Skotak ("Skotak") who informs us that "[t]he earliest film to deal with UFO cover-ups and government conspiracies in connection therewith was a small low-budget film called 'Invasion of the Saucermen' produced in 1957 by American International."As the footage appears, Skotak's superimposed voice says "[r]ight in the middle of the film is a little military group that goes out to the wooded area and immediately proceeds to destroy the ship and bury it and cover up all trace of it."Immediately thereafter, Skotak's voice-over ends and the audience hears dialogue from the clip in which one of the army officers says, "Just think of it. Only this special unit and the President of the United States will know what happened here;" to which the other replies, "You mean, you think we know what's happened here?"The clip then ends and the program segues into a short piece about Bob Burns, the "effects assistant" on "Saucermen," who shows the head he wore for close-ups in the film. This is followed by 8 seconds of "Saucermen" trailer footage showing a saucerman's hand. At the end of the program, the hand reappears, along with the saucerman's head, in an 8 second clip that is part of a montage from several films and is shown with the voice over: "[s]hould we awake, one day, to learn something is indeed headed our way, Hollywood's visions will provide our frame of reference."
The Copyright Act permits, in certain circumstances, appropriation of protected expression notwithstanding copyright protection. The concept is embodied in 17 U.S.C. § 107 (" § 107") which states that the "fair use" of a copyrighted work does not infringe the copyright in that work. As the court put it in Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1255 (2d Cir.1986), "[t]he purpose of fair use is to create a limited exception to the individual's private property rights in his expression-rights conferred to encourage creativity-to promote certain productive uses of copyrighted material."
Whether a given use is fair is determined on a case-by-case basis within the context of four factors enumerated in § 107:(1) the purpose and character of the use, including whether the 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. 7 U.S.C. § 107; see Harper & Row Publishing v. Nation Enterprises, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). It is defendant's burden to prove that the use was fair. See Coleman v. ESPN, Inc., 764 F.Supp. 290 (S.D.N.Y.1991).
"The heart of the fair use inquiry is into the first specified statutory factor identified as 'the purpose and character of the use ." ' On Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir.2001) (Judge Leval). The focus of this factor is "whether the new work merely supersedes the objects of the original creation ... or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative." " Campbell v. Acuff-Rose Music Co., 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (U.S.1994) (citations omitted). Although "transformativeness" is primarily analyzed in connection with the first fair use factor, it forms the basis of the entire fair use analysis. See On Davis, 246 F.3d at 174-176. Surprisingly, relatively few cases have determined whether the use of clips in a film brings about a sufficient transformation to satisfy the first fair use factor. Courts in this circuit have considered whether showing copyrighted visual art (quilts, photographs, sculpture) in the background of television and film scenes is transformative, but prior to the trio of Hofheinz cases scant judicial attention had been paid to the use of film or television clips in those media.
There is a strong presumption that the use of a copyrighted work is transformative when the allegedly infringing work falls within one of several categories described in § 107, "criticism, comment, news reporting, teaching..., scholarship or research." See New Era Publications Int'l ApS v. Carol Pub. Group, 904 F.2d 152 (2d Cir.1990) (as long the infringing work constitutes criticism, scholarship or research, "the assessment of the first fair use factor should be at an end"). Documentaries and biographies fall within the protected categories of § 107, and are entitled to the presumption the use of the copyrighted material is fair. In Monster Communications, Inc. v. Turner Broadcasting System, 935 F.Supp. 490 (S.D.N.Y.1996), the court stated without elaboration, and without reference to the copyrighted clips, that a documentary about Muhammad Ali was a biography and therefore "undeniably constitutes a combination of comment, scholarship and research, all of which enjoy favored status under § 107." Id. at 493-494.Similarly, in the two companion cases to the instant action, the allegedly infringing footage appeared in "critical" programming. In Hofheinz v. A & E Television Networks, et al.,00-cv-623, 2001 U.S. Dist. LEXIS 8616 (S.D.N.Y.2001), Judge Sweet concluded that the defendants used a clip from "It Conquered The World" "to create a new copyrightable film biography" of Peter Graves. And, in Hofheinz v. AMC Productions, Inc., 147 F.Supp.2d 127 (S.D.N.Y.2001), Judge Sifton concluded that defendants used the clips from various films released by American International Pictures ("AIP") in a documentary about AIP in order "to create a new copyrightable documentary .... [which] aims to educate the viewing public...." Id. at 137.
Here too, defendant used the clips from "Invasion of the Saucermen" in a documentary-style program that identified the common themes and political contexts of alien visitation films. Plaintiff's suggestion that no critic would be interested in a film like "Invasion of the Saucermen" because it is no longer in circulation is puzzling, since the measure of a film's value to the critic is generally not its availability (in fact it is often the inverse), but is instead the quality of that film or its relationship to something else, whether it be another film, a political event, or some other source of context. Here, there is a legitimate critical interest in the Saucermen as the first of its genre to deal with the government cover-up theme. Plaintiff also argues that "Aliens Invade Hollywood" is mere entertainment and fantasy, and not the kind of work contemplated by the § 107 categories. This second argument is flawed in two respects. First, § 107 categorizes allegedly infringing works on the basis of their relationship to the subject matter depicted-i.e., whether the allegedly infringing work aims to comment, critique, report on, or research a particular subject. Section 107 does not explicitly distinguish between entertaining and serious, plausible and implausible, or weighty or frivolous commentaries, and I do not propose to engage in such subjective line-drawing.
Second, as the Supreme Court suggested in Campbell, the key question underpinning the § 107 categories is whether the copyrighted material is used in the allegedly infringing work for a transformative purpose. See Campbell, 510 U.S. at 579. Although post-Campbell,courts have been neither consistent nor expositive in the interpretation and application of "transformative," it is now established that uses which merely copy, repackage, republish, substitute for, encapsulate or appropriate the essence of copyrighted material are not transformative; whereas uses which "employ the quoted matter in a different manner or for a different purpose from the original" are transformative. See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1111 (1990). Thus, in Hofheinz v. A & E Television Networks, et al., Judge Sweet noted that the defendants used the copyrighted footage to show the kind of roles Peter Graves took in his early career and observed that the clips enriched the biography and "enabl[ed] the viewer to understand the actor's modest beginning in the film business" 2001 U.S. Dist. LEXIS 8616, at *12.
Here, the use of "Invasion of the Saucermen" footage was equally transformative. Discovery used the clips for various purposes, including: (1) to illustrate the theme of the government cover-up; (2) to demonstrate how, and with what special effects technology, aliens have been represented in film; and (3) to provide contrasts between the early science fiction films like "Saucermen" and more recent films. The fleeting clips betray little of "Saucermen's" plot, only the fact that aliens visited and the government tried to cover up the evidence. Discovery had no interest in "Saucermen" in its own right, the story, characters, etc.; its interest was confined to "Saucermen" as an early example of a common theme in alien visitation films. In contrast to Roy Export Co. v. Columbia Broad. Sys.,672 F.2d 1095 (2d Cir.1982), where CBS had compiled for use in a biography of Charlie Chaplin "a series of classic scenes from Chaplin's movies, ... a thirteen-minute film montage of the master's greatest hits," "Aliens" does not attempt to be a substitute for viewing the entirety of "Saucermen," nor does it capture its essence. See also Richard Feiner & Co., Inc. v. Passport Int'l Products, Inc.,1998 U.S. Dist. LEXIS 11878, 97-cv-9144, (S.D.N.Y.1998) (defendant compiled extensive movie clips from twelve Laurel & Hardy films in a program entitled "The Legends of Comedy"); Nihon Keizai Shibun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65 (2d Cir.1998)(abstracts of foreign newspaper articles were substantially similar to and captured the essence of the copyrighted articles).
Where, as here, the allegedly infringing work is transformative, whether that work is "commercial" is of less significance. See On Davis v. The Gap, Inc., 246 F.3d 152, 174-175 (2d Cir.2001) ("The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use") (quoting Campbell, 510 U.S. at 579). Although § 107 also requires the court to consider "whether such use is of a commercial nature or is for nonprofit education purposes," 17 U.S.C. § 107(1), the Second Circuit has stated that "[we] do not give much weight to the fact that the secondary use was for commercial gain." Castle Rock Entertainment v. Carol Publ'g Group, 150 F.3d 132, 140 (nearly all uses of copyrighted works that fall within the categories "criticism, comment, news reporting, teaching..., scholarship or research" are generally conducted for profit); see Hofheinz v. A & E Television Networks, et al., U.S. Dist. LEXIS 8616 (S.D.N.Y.2001) ("It matters not that the Peter Graves' biography was produced to entertain audiences"). Thus, Discovery's profit motive does not alter the analysis of the first fair use factor.
In sum, this first and foremost factor strongly favors defendant.
The second statutory factor focuses upon the nature of the copyrighted work. See § 710(2). As a general rule, published works enjoy less fair use protection than unpublished works, and creative works are entitled to greater protection that factual works. See New Era Publications, 904 F.2d at 157. Here, the film and the trailer are creative works and were released in the 1950s; however, they are entitled to lesser protection than other published, creative works because the film is no longer being shown in theaters and is not available for rental in video stores, and the trailer is not shown anywhere at all. See Hofheinz, 2001 U.S. Dist. LEXIS 8616, at *15. I echo the conclusions of Judges Sifton and Sweet in the two Hofheinz companion cases and find that this factor "slightly favors" plaintiff; but I also note that the nature of the copyright work "is rarely found to be determinative," On Davis, 246 F.3d at 175, and that the "slight" advantage is of little consequence in this fair use analysis.
The third factor directs the Court's attention to the amount of the clip used in relation to the copyrighted work as a whole. See § 107(3). The copyrighted work in this case is the film "Invasion of the Saucermen" from which the trailer footage derives .The third factor "has both a quantitative and qualitative element to it. As a result, the factor has favored copyright holders where the portion used formed a significant percentage of the copyrighted work, or where the portion used was essentially the heart of the copyrighted work." Wright v. Warner Books, Inc., 953 F.2d 731, 738 (2d Cir.1991). The principle underlying the third factor is that "fragmentary copying is more likely to have a transformative purpose that wholesale copying." On Davis, 246 F.3d at 175.
Here, there is no doubt that the fleeting fragments of "Invasions of the Saucermen" had a transformative purpose. The total running time of the clips used in "Aliens" is 48 seconds, a mere 1% of the plaintiff's film. Further, the three clips, two of eight seconds and the third lasting thirty-two seconds, betray little of the film's characters, themes, resolution or plot. "Aliens" reveals nothing of Saucermen except that an alien(s) arrives on Earth and several government officials hide the spacecraft. Unlike the many cases cited by plaintiff for the proposition that brevity of use is no guarantee of fair use, here the clips were used for the transformative purpose of enriching the commentary on the alien visitation genre and did not constitute "the heart of the copyrighted work." Wright, 953 F.2d at 738. Consequently, this factor cuts in favor of defendant.
The fourth fair use factor is the effect of the use upon the potential market for or value of the copyrighted work: See 17 U.S.C. § 107(4). With regard to this last factor, it bears noting that to the extent that there is a market for "Saucermen" at all, it is diminutive.
The film had its theatrical run in the mid-1950's, and is today rented for film festivals and special showings. It is not being sold or rented to the public in the videocassette market and though there is a small market for pieces of footage from the film (plaintiff entered into five licenses of this kind over the past seven years), plaintiff does not advertise or promote the film. From all it appears, there is, at best, sporadic interest in pieces of footage, sui generis to the potential user who wants to use a few frames in a television program and avoid suit by plaintiff.
Hofheinz, 2001 U.S. Dist. LEXIS 8616, at *19. Although the above quoted passage was from a decision about "It Conquered The World," the market facts for that film are indistinguishable from "Invasion of the Saucermen," with the one exception that plaintiff has licensed "Saucermen" only twice in the last six years.
Moreover, plaintiff has adduced no evidence that that the broadcasts of "Aliens Invade Hollywood" diminished audience interest in "Saucermen." See id (the clips were "too few, too short, and too small in relation to the whole" to undercut the market for plaintiff's copyrighted works) (citing Monster Communications, 935 F.Supp. at 495, and Hofheinz v. AMC Productions, Inc., 147 F.Supp.2d at 120). Indeed, the only effect that "Aliens" likely had upon the market for "Saucermen" was to increase interest in this little known, but we are told, quite important film.
Hofheinz urges the Court to find that there is a separate market for film clips, and that were this Court to grant defendant's motion that market would collapse. Setting aside the fact that Hofheinz has produced no evidence as to the existence of such a market, apart from the nine licenses that she has entered into in the last six years, or any evidence whatsoever that the two clips had an adverse impact on the market for clips of "Invasion of the Saucermen," to find that the use of short clips presumptively constitutes infringement would eviscerate the fair use defense in this area "since every copyright infringer seeking the protection of the fair use doctrine could have potentially sought a license from the owner of the alleged mark." Hofheinz v. AMC Productions, Inc., 147 F.Supp.2d at 140; see Hofheinz v. A & E Television Networks, 2001 U .S. Dist. LEXIS 8616, at *20.
Thus, the final element favor the defendant.
For the reasons discussed above, defendant's motion to dismiss is granted in its entirety and the Clerk of the Court is instructed to close this case and remove it from my docket.
 The other two cases are: Hofheinz v. AMC Productions, Inc., 147 F.Supp.2d 127 (S.D.N.Y.2001) (J. Sifton) and Hofheinz v. A & E Television Networks, et al., 00-cv-623, 2001 U.S. Dist. LEXIS 8616 (S.D.N.Y.2001) (J. Sweet).
 Although I am granting defendant's motion, plaintiff is fortunate that I chose to read until the end of her 35 page brief (submitted without permission), 10 pages beyond the 25 page maximum clearly set forth in my widely available, individual rules.
 Plaintiff argued that Ms. Yager's affidavit should not be considered because she was never produced for a deposition and because the testimony is "surprising and prejudicial." It is difficult for me to understand how her testimony could be surprising, and it does no more than corroborate other testimony. In any event, the Court is in possession of sufficient facts with or without Ms. Yager's affidavit to resolve defendant's motion.
 Plaintiff attaches importance to the size of the Discovery Channel's audience and the fact that the number of exhibitions of the program is not evidence, but I do not share plaintiff's concerns and fail to see their relevance.
 A trailer is footage of scenes from a film, usually with graphics and a voice-over, shown in movie theaters to promote the film.
 The Second Circuit has staked out a minority position on the relative importance of the four factors. Other circuits have adopted the view that the fourth factor, the impact upon the market, is the dominant factor.
 One implication of the foregoing analysis is that many uses of clips from films, short of the quantitatively and qualitatively extensive takings in Roy Export and Nihon Keizai Shibun, are likely to be found transformative, since clips are frequently used to create mood, tone and context, and not as substitutes for entire copyrighted work. See Sandoval v. New Line Cinema, 973 F.Supp. 409,413 (S.D.N.Y.1997). Indeed, it is difficult to imagine a use of a short clip in a commentary/documentary that would not qualify as transformative. Given the circuit's emphasis upon transformativeness in the fair use test, the relative ease with which many clips qualify as transformative suggests that owners of films may have little protection against the unlicensed use of fragments of their copyrighted work, even when the allegedly infringing work is not "criticism, comment, news reporting, teaching..., scholarship or research."Courts have accorded greater protection to the use of images of copyrighted art or objects in film and television, notably Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir.1997) (poster used as part of a television set decoration), but in those cases the copyrighted works were shown in their entirety, not in a fragmentary form.
 Plaintiff's argument that defendant lacked standing to make a fair use defense because the clips were used for a commercial purpose is meritless.
 Neither party briefed the issue, but the court presumes that the trailers were published at the time of the film's release.
 Hofheinz appears to characterize the copyrighted work as the trailer from which the clips were actually taken, as opposed to the entire film. However, she has not separately copyrighted the clips, nor has there been argument to suggest that trailers, and specifically this trailer, are entitled to protection separate and apart from the copyrighted films from which they derive. Indeed, such a conclusion would create the illogical result that scenes from a copyrighted film would be entitled to heightened copyright protection simply because they are included in a trailer-as the scene would then represent a greater portion of the protected work both quantitatively and qualitatively. It is conceivable that a trailer might be sufficiently different from the film to qualify as a derivative work, but there has been no argument on this issue and I have no intention of wading into such a quagmire without any help from the parties.
June 02, 2015
60 USPQ2d 1845
No. 00 CIV. 3802(HB).
United States District Court, S.D. New York
H2O Case Admin.
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