Bill Graham Archives sued book publishers that used images of concert posters in a Grateful Dead biographical book for copyright infringement. The U.S. District Court in New York granted the publisher

Bill Graham Archives sued book publishers that used images of concert posters in a Grateful Dead biographical book for copyright infringement. The U.S. District Court in New York granted the publishers summary judgment, holding their use of the images to be a fair use.

The following is a summary of the court's opinion.

Background: Dorling Kindersley planned to publish a book entitled Grateful Dead: The Illustrated Trip. The publisher sought permission from Bill Graham Archives (BGA) to include certain poster images to "help make this book the definitive Grateful Dead history."

BGA responded by offering permission in exchange for Grateful Dead Productions' grant of rights to create CDs and DVDs out of BGA's audio and video recordings of the Dead concerts. Grateful Dead Productions rejected this offer.

Dorling's researcher again contacted BGA, which responded by saying that it would be open to negotiating a license for fees within industry standards -- based on poster series type, image size, number of images and quantity of books printed.

After the publisher cleared rights to the bulk of the visual material for the book -- including six of the seven works to which BGA claimed rights in this suit -- BGA sent an e-mail to Dorling stating that three or more images were included without an agreement in place.

BGA then sued Dorling Kindersley Ltd., Dorling Kindersley Publishing and Donnelley & Sons for copyright infringement.

The defendants moved for summary judgment, claiming fair use. In considering this defense, the court analyzed four fair-use factors to balance the interests of the parties.

First, the court considered the purpose and character of the use.

"Biographies in general, and critical biographies in particular, fit comfortably within these statutory categories of uses illustrative of uses that can be fair," the court wrote. BGA did not contest that the book was a biographical work.

Although a biography, the more important question was whether the allegedly infringing work merely superseded the original work or instead added something new, with a further purpose or different character that altered the first with new expression, meaning or message, the court wrote. In other words, if the use was "transformative," the fair use doctrine would tend to protect it in order to enrich society.

The court held that the seven thumbnail images placed in chronological order on the timeline was transformataively different from their mere expressive use as posters. They were used to commemorate historic events that occurred.

"The Grateful Dead posters are used, in conjunction with other pieces of visual art and photographs, in a creative layout. This use is sufficiently transformative, and different from the original purpose to advertise, draw attention to and solicit listeners to an event, such that the market is not one expected to be reserved to the copyright holder," the court wrote.

The images were not used for purely aesthetic value, the court added, and the significant reduction in size indicated an entirely different use of the images.

As a result, the first factor favored the defendants.

Second, the court considered the nature of the copyrighted work. The posters were creative works, so this factor favored BGA, the court said.

Third, the court questioned whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole were reasonable in relation to the purpose of the copying.

Although the entire images were used, the court noted, they formed only a small part of the book meant to represent the band's history. They were displayed among hundreds of other images and text. As such, the reproductions could not be said to "capture the essence or heart of the original work, which was initially a full size concert poster."

Moreover, the use was meant to commemorate certain landmark shows. While the shows could have been demonstrated without using the thumbnail reproductions, "the creative nature of the relevant promotional materials could not be conveyed as effectively without the use of several samples of the work in their entirety," the court said. Therefore, the third factor favored the defendants.

Fourth, the court considered the effect of the use on the potential market for the copyrighted work.

Although a book that simply compiled the collection of posters is an anticipated market for the copyright holder, the court wrote that it would be unreasonable to find that defendants unjustly appropriated BGA's market.

"The use of seven posters, as thumbnails, in a 480 page book, does not produce the type of market harm recognized by the fair use inquiry," the court wrote.

Harm to a market for licensing revenues will only be recognized if the market is "traditional, reasonable or likely to be developed, and is not a protected transformative use," the court said. This fourth factor also favored the defendants.

Finally, the court considered the issue of good faith even though not a listed factor for fair use in the Copyright Act.

The court noted that the defendants informed BGA of their intentions to use their images and made an effort to license them. This showed a good faith effort by the defendants, which weighed favorably in their favor.

The court granted the defendants' motion for summary judgment, finding their use a fair use.

Case: Bill Graham Archives LLC v. Dorling Kindersley Ltd., Dorling Kindersley Publishing Inc., and Donnelley & Sons Co.
Court:U.S. District Court for the Southern District of New York, Judge J. Daniels, case no. 03CV9507GBD, decided May 12, 2005
Counsel for Bill Graham Archives: Michael Elkin, William Patry, Thomas Lane and Deborah McNamara with Thelen, Reid & Priest in New York
Counsel for Dorling Kindersley and Donnelley & Sons: Richard Dannay and Thomas Kjellberg with Cowan, Liebowitz & Latman in New York