In this post, Divya Mirlay analyses whether the ‘fair use defence’ can be used in the context of GIFs through a comparison of US and Indian case law on fair use. This is Divya’s first submission for the fellowship.
The internet has recently morphed into a gurgling mess of memes, vines and Graphic Interchange Formats, (“GIFs”). GIFs comprise of short, soundless video clips typically lasting for about 2-6 seconds, forming an endless loop. The creators of GIFs may be issued takedown notices on grounds of infringement if the GIFs are found to have been made from copyrighted work such as television shows, movies, etc. without the copyright owner’s permission. GIFs have been in use for the past 25 years, but with the advent of 9Gag, Twitter and other social media they have become infamous for their potentially infringing nature. The oft-cited defense used is that of fair use (or fair dealing, in the Indian context). So far, no judicial pronouncement has discussed the potentially infringing nature of GIFs in detail. This post examines the evolving trends of the fair use doctrine in the context of GIFs.
FAIR USE DOCTRINE
American jurisprudence on fair use is based on the four-factor test as held in Folsom v Marsh (29USPQ 2d 1961). The factors to be considered in determining the applicability of the fair use:
- purpose and character of the use, specifically, whether it is ‘transformative’;
- nature of copyrighted work, i.e., whether it is a commercial work;
- amount and substantiality of the portion of the work;
- effect on the use of the new work on the potential market for the copyrighted work.
Judge Leval in his article, Toward a Fair Use Standard criticized the vagueness of the doctrine. He stated that transformation of the original creator’s purpose formed the crux of fair use. The secondary work was required to employ the quoted matter in a different manner or for a different purpose.
In Campbell v Accudd-Rose Music, 510 US 569 (1994) Scotus borrowed from Judge Leval’s work in focusing on whether and to what extent the secondary work was ‘transformative’. More importantly, the Court held that the more transformative the new work, the less the significance of other factors like commercialization, that may weigh against the finding of fair use.
Indian courts too have recognized the element of transformation. In R.G. Anand v. M/S. Delux Films & Ors (1978) 4 SCC 118, a principle resembling the transformative doctrine developed later in America was propounded. It was held that where the theme remained the same but was presented and treated differently, the subsequent work becomes a completely new, non-infringing work. This was later elucidated by Justice Bhatt in The Chancellor Masters and Scholars of the University of Oxford v. Narendra Publishing House and Ors. 2008 (106) DRJ 482 Chancellor Masters . Reiterating Judge Leval’s test for a secondary work being transformative in nature, it was held that in order to merit fair dealing, the purpose served by the secondary work is required to be substantially different from that served by the original work.
The question now remains as to whether GIFs are transformative. Being fundamentally different from movies or TV footage, GIFs may either comment on that footage, or may be used in a context completely independent of the original work, intended for a different purpose. Moreover, a GIF is highly unlikely to substitute the original work, thereby not harming the original work’s market. Therefore, as per the tests laid down in the aforementioned cases, a strong fair-dealing defense could be made out.
So far, the courts have held that if the secondary work is transformative in nature, regard to the other three factors need not be given in determining fair use. In Campbell the Court court found that as long as the work remained transformative, the significance of the other factors, such as commercialization was not to weigh against the finding of fair use. In RG Anand, it was held that if the work was transformative, then the degree or substantiality of the copying might not matter, and further, as the secondary work could not act as a substitute for the original work, the market of the latter would remain unaffected. In other words, the fourth factor relating to the effect of the work on the market of the original work need not be considered in determining fair use.
The courts so far haven’t contemplated a situation where a secondary, transformative work, nonetheless harms the market of the original work. Such a situation translates to a GIF which is used or has the susceptibility of being used in place of the original work. The NFL recently issued takedown notices to Twitter for hosting allegedly infringing GIFs . The sports site Deadspin had created GIFs capturing goals or highlights of football matches and posted them on Twitter. NFL contended that this would result in viewers watching the GIFs instead of paying the fee to watch the game. Some have scoffed at the mention of this ground in particular, arguing that if anything, the NFL received free advertisement. However, if proved that GIFs offering the crux of matches resulted in a decreased viewership of the real game, then the judicial trend so far may require reversal. The other three factors, previously dwarfed by the element of transformation, may re-gain their significance.
GIF’s fair-use fate could be decided on a case-by-case basis, much to the inconvenience of all stakeholders. So far, there exist no clear factors to differentiate ‘fair-use’ from ‘infringement’ in the context of GIFs , which may prove to be woefully inconvenient in the very near future.