Henley v. Devore

I. Case Name and Citation: Henley v. Devore, No. 09-0481, 2010 U.S. Dist. LEXIS 67987 (C.D. Cal. June 19, 2010).

II. Facts of the Case: In two separate advertisements for his 2010 campaign for California’s U.S. Senate seat, California Assemblyman Charles Devore altered the lyrics of two well-known songs - Boys of Summer (the “Summer Secondary Work”) and All She Wants to Do is Dance (the “Dance Secondary Work” and, collectively with the Summer Secondary Work, the “DeVore Secondary Works”) - to criticize political opponents. Former Eagles frontman Don Henley, one of the founders of Tom Petty and the Heartbreakers - Mike Campbell - and songwriter Danny Kortchmar (collectively, the “Plaintiffs”) owned valid copyright to each or both of the original songs. The Summer Secondary Work criticized President Barack Obama and his supporters, and the Dance Secondary Work critiqued Democratic Senator Barbra Boxer, who was the incumbent holding the office for which DeVore was running.

III. Procedural Posture: In April 2009, the Plaintiffs sued Devore and his senate campaign’s Director of Internet Strategies and News Media (collectively, the “Defendants”) for copyright (direct, vicarious, and contributory) and trademark (false endorsement) infringement, as well as unfair competition under California state law. Both parties filed cross-motions for summary judgment on the copyright and trademark claims, and the Plaintiffs agreed to drop the California state unfair competition claim.

IV. Holding: The court (1) granted the Plaintiffs summary judgment on their direct, vicarious, and contributory copyright claims, (2) found summary judgment to be inappropriate for the Plaintiffs’ willful copyright infringement claim, and (3) granted the Defendants summary judgment on the Lanham Act claim.
1. Direct Infringement: The court held that the Defendants’ use of the Plaintiff’s songs was not fair use.
a. Purpose and Character Factor: The court held that the DeVore Secondary Works were satire rather than parody because they merely “evoked the same themes of the original in order to attack an entirely separate subject.” Though the court found slight parody of Henley in the Summer Secondary Work - assuming arguendo that parody of the author is fair use - parody of Henley was a very minor element of that work because the work’s main target was President Obama and his supporters. Furthermore, the court found that neither the Summer Secondary Work offered commentary on the liberal political undertones in Boys of Summer nor the Dance Secondary Work commented on the “explicit social commentary” contained in All She Wants to Do is Dance. Applying Ninth Circuit precedent, the court also held that the DeVore Secondary Works were commercial in nature because the Defendants “benefitted or gained an advantage without having to pay customary licensing fees.” Accordingly, the first fair use factor weighed against a finding of fair use.
b. Nature of the Copyrighted Work Factor: The second fair use factor also weighed against a finding of fair use because (1) “the Plaintiffs’ works are expressive and at the core of copyright protection” and (2) the slight parody of Henley in the Summer Secondary Work did “not weigh heavily in the overall analysis.”
c. Amount and Substantiality of the Portion Used: The third fair use factor also weighed against a finding of fair use. Because the Dance Secondary Work borrowed heavily from the original work and lacked any parodic character, the court found that “the amount borrowed is excessive in relation to the transformation.” Likewise, even though the Summer Secondary Work had a parodic element - assuming arguendo that parody of the author is fair use - “the amount of the Defendants’ copying goes far beyond anything that has been found to be fair use in the parody context” and was “far beyond that reasonably necessary to conjure up Henley.”
d. Potential Impact on the Market: The fourth fair use factor also weighed against a finding of fair use. The court reasoned that it could not hold, as a matter of law, that the “widespread dissemination of similar satirical spins” on Henley’s songs would not harm the market for the original works, even though it was not clear that the DeVore Secondary Works actually threatened the markets for Henley’s songs. Regarding the potential effects that the DeVore Secondary Works might have on the market for derivatives of Henley’s songs, the court held that the Defendants submitted “no evidence demonstrating that [the DeVore Secondary Works] would not usurp the potential licensing market” for the original songs.
2. Vicarious and Contributory Copyright Infringement: The court found DeVore to be liable for both contributory and vicarious copyright infringement: (1) he knew that the potentially infringing DeVore Secondary Works were being made and contributed materially to their creation and (2) exercised supervisory control over his campaign staff who created the DeVore Secondary Works and directly benefitted from the infringement. The Director of Internet Strategies and News Media was found liable for contributory infringement, but because he exercised no supervisory control over DeVore, was not found liable for vicarious infringement.
3. Willful Infringement: The court held that it could not make a ruling on summary judgment for the Plaintiffs’ willful infringement claim because a genuine issue of material fact existed as to the Defendants’ “good faith belief that their use constituted fair use and whether that belief was objectively reasonable.”
4. Lanham Act False Endorsement Claim: The court granted summary judgment to the Defendants for the Plaintiffs’ Lanham Act claim. Adopting Second Circuit precedent, the court held that a song cannot function as a trademark for either the performer or the song itself. Accordingly, a Lanham Act claim cannot be maintained solely because a party uses a song without authorization. The Defendants could be found liable for misappropriating a distinctive attribute of Henley’s if the DeVore Secondary Works imitated such an attribute and that imitation created a likelihood of confusion as to Henley’s endorsement of DeVore’s candidacy. However, the court held that “no reasonable jury could find a likelihood that Henley actually performed” the DeVore Secondary Works.

V. Important Dicta: The court analyzed whether criticism of the author of an original work should be considered parody or satire under a fair use analysis. The court reviewed the current split among courts, including the district courts within its own circuit, and discussed the arguments for and against criticism of the author being transformative. Most notably, the court pointed out that “it is important to distinguish between a use which directly targets the author for holding a particular view and a use which merely targets a view that happens to be held by the author,” noting that the former may qualify as fair use while the latter is “essentially creating satire and therefore lacks the need to reference the author.” In its fair use analysis, the court assumed arguendo that criticism of the author was parody and, thus, weighed in favor of fair use. The court, however, avoided making a definitive determination on matter because the DeVore Secondary Works did not constitute fair use even under that assumption.

VI. Likely Future Importance or Unanswered Questions
1. The aspect of the case that will have the most significant impact on future cases is the holding that a song cannot function as a copyright for itself or the performer. As the court notes, that principle is well-established in the Second Circuit and has been adopted by other courts within the Ninth Circuit. Accordingly, unless the alleged infringer misappropriated an aspect of a musician’s persona when using his or her song without authorization, musicians will not be able to assert Lanham Act claims in the Central District of California when their songs are used without authorization. Because the Central District of California includes Los Angeles, this will have a significant impact on litigation involving the music industry.

VII. Critical Analysis
1. The court’s parody and satire analysis was in accordance with the Supreme Court’s holding in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), but it should have made a definitive ruling on whether criticism of the author constitutes fair use parody. Even though the DeVore Secondary Works only tangentially parodied Henley, the court was able to incorporate that perceived parody into its fair use analysis. Accordingly, it was not necessary to leave the parody-of-the-author question open in this case. Doing so unnecessarily created more uncertainty in the doctrine of fair use, which is already a very mercurial doctrine by its nature.

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