In a couple of days, you might see armies of children and adults alike donning their spookiest Halloween masks – like the iconic mask from the Scream horror film franchise. While just looking at that mask might send chills down your spine, a recent fair use decision, Easter Unlimited, Inc. v. Rozier, from the Eastern District of New York involving the mask should spook copyright owners and creators.
Terry Rozier, also known as “Scary Terry,” is currently a point guard in the NBA for the Charlotte Hornets. Rozier earned the nickname “Scary Terry” in 2018 as a member of the Boston Celtics after he successfully filled in for injured starting point guard Kyrie Irving. Due to his love of scary movies, growing celebrity status, and continued on-court success, Rozier embraced the “Scary Terry” persona. He then decided to market a line of t-shirts and sweatshirts featuring the nickname along with a cartoon image of himself wearing the iconic serial killer mask from the movie Scream—known as the Ghost Face Mask. Easter Unlimited, Inc. has a registered copyright for the three-dimensional design of the sculpted mask as well as a registered trademark for the Ghost Face Mask image. In 1996, Easter granted a license to the filmmakers of Scream and its sequels to use the Ghost Face Mask in the movies. However, Easter Unlimited did not authorize Rozier to use images of the mask in his merchandise. After discovering the unauthorized use, the company sued Rozier for direct infringement of its copyright and infringement of its trademark rights in the Ghost Face Mask. The company also alleged contributory and vicarious infringement of its copyright by Rozier on the basis that Rozier had authorized others to manufacture his apparel and thereby actually create infringing copies of the Ghost Face Mask. Easter Unlimited moved for summary judgment on the contributory and vicarious copyright infringement claims and the trademark claim. Rozier filed a cross motion for summary judgment on all claims, arguing that his use of the Ghost Face Mask qualified as fair use.
On September 27, 2021, the District Court for the Eastern District of New York issued an opinion in the case, granting Rozier summary judgment on all the claims. The court first held that Rozier did not present enough evidence to overcome the presumption that Easter Unlimited’s copyright was valid. Accordingly, the court established that the mask was validly protected by copyright and that Rozier had infringed Easter Unlimited’s copyright in the mask. However, the court’s analysis on Rozier’s fair use claim is where the decision took a really scary turn.
The court first explained that the fair use doctrine examines four factors: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the work that is used, and (4) the effect of the use on the original’s potential and actual markets. After noting that there are no bright-line rules in determining fair use and that the factors must be balanced as part of the entire inquiry, the court then launched into a fair use analysis that problematically focused on Rozier’s use of the Ghost Face Mask as it appeared in Scream.
The Purpose and Character of the Use
The first factor in many recent fair use analyses has turned on the question of whether the purpose and character of the claimed fair use is “transformative.” Here, Rozier argued that the use of the Ghost Face Mask on his shirts was a parody and satire, and therefore, it was a “classic fair use” under the Supreme Court’s ruling in Campbell v. Acuff-Rose Music. According to Rozier, his “stylized cartoon version of the Ghost Face Mask was used to create ‘a humorous article of clothing that commented on the ‘Scary Terry’ persona,’ and ‘satirized the familiar trope of professional athletes as remorseless ‘killers’…” Although Rozier’s argument that satire was a “classic fair use” contradicted established fair use principles, the court agreed with Rozier, finding that the shirts were both a parody and satire.
The major twist in the court’s analysis was that it evaluated whether Rozier had created a parody and satire of the Ghost Face Mask as it was used in the movie Scream. The court did not evaluate whether Rozier’s use of the mask was a parody or satire of Easter Unlimited’s original Ghost Face Mask because it reasoned that Rozier’s use of the mask was a “secondary use of a secondary use.” The court’s analysis inextricably linked the use of the Ghost Face Mask in the movie with the exclusive rights to the copyright held by Easter Unlimited in the original mask. According to the court, the movie had given the mask a “meaning beyond a Halloween ghost costume.” The court determined that Rozier’s use of the mask in the “humorous embodiment of an NBA basketball player who is known as a ‘killer’ scorer … lampoon[ed] the famous mask-wearing movie villain and killer in the context of NBA players, NBA fans, and even the NBA media.” This, the court stated, was how Rozier had parodied Easter Unlimited’s mask “or its work (as used in Scream)” (emphasis added).
The court also found that Rozier’s use of Easter Unlimited’s mask was satirical, giving equal weight and consideration to satire in its fair use analysis as it gave to parody. However, satire is generally not found to be fair use, while parody often is. Citing to Blanch v. Koons for its evaluation of whether Rozier’s use was satirical, the court stated that it had to consider if Rozier had a “genuine creative rationale for borrowing [Easter Unlimited’s] image rather than using it merely ‘to get attention or to avoid the drudgery in working up something fresh.’” Convinced by Rozier’s argument that he selected the Ghost Face Mask for the shirts in order to “poke fun” at the trope of “hot-shooting point guards as remorseless ‘killers,’” the court concluded that Rozier had such “genuine creative rationale” for the use of the mask on his t-shirt line. Again, the court evaluated the satirical use based on Rozier’s use of the mask as used and portrayed in the movie Scream– not Easter Unlimited’s copyright protected three-dimensional design of the sculpted mask.
Finally, the court was quick to discount the commercial nature and purpose of Rozier’s shirts. The finding that Rozier’s work was transformative, satirical, and parodical outweighed, in the court’s eyes, the commercial nature of the work. Having concluded that the first fair use factor weighed in favor of Rozier, the court then continued the fair use analysis.
The Nature of the Copyrighted Work
The second statutory factor evaluates the nature of the copyrighted work at issue. Courts consider the expressive or creative nature of the work as well as its publication status, and the use of a more expressive or creative work is less likely to be held as fair use as compared to the use of a factual work.
The court here, finding no dispute that Easter Unlimited’s mask was creative and published, held that this factor favored Easter Unlimited. However, the court also noted that it did not find the second factor to be significant in its fair use determination since the court already found that the defendant’s use was sufficiently transformative under the first factor.
Amount and Substantiality of the Work Used
The third factor considers how much of the original work, in terms of the “quantity and value of the materials used,” was appropriated by an alleged infringer in relation to the entire work and for “the purpose of the copying.” The court first noted that there is no bright-line rule that dictates how much of a work can be copied before losing the cover of fair use. It noted that for works such as musical works, the essence of the original can be successfully captured by copying only a small amount of the original. The court stated that on the other hand, works such as photographs might necessitate copying all or most of the original in order to capture its essence and achieve a parodical fair use purpose.
The court followed the latter principle, determining that Rozier’s use of the mask would lose meaning without substantial copying of it, and therefore justified a greater taking under fair use. Given Rozier’s goal of invoking the serial killer image from the movie Scream in order to complete his allegedly parodical and satirical purposes via his merchandise line, the court found that Rozier necessarily copied a substantial portion of the mask. Balancing the substantiality of the copying against the weight afforded by the transformative “justification” for doing so, the court held that this factor favored neither party.
Impact of Rozier’s Use on the Underlying Work’s Potential Market
The final fair use factor evaluates the impact of Rozier’s use on the potential market for the original work. According to the Second Circuit, the key question is not “whether a defendant’s use suppresses or even destroys the market for the original or potential derivatives, but whether a defendant’s use of the protected work usurps the market for the original work.”
Here, Easter Unlimited showed that the market for its Ghost Face mask included licensing the mask for use on apparel. Rozier countered, arguing that none of the licensed uses of the Ghost Face masks were for sports apparel, much less for products aimed at fans of Terry Rozier.
Ultimately, the court held that this factor weighed in favor of Rozier. In arriving at this conclusion, the court cited to Authors Guild v. Google, stating that the more transformative a work is, the less likely it is that the work “usurps” the original’s market. The court recognized that Easter Unlimited did license the mask for use on apparel, such as t-shirts, but found that Rozier’s transformative shirts posed no threat to that market. The court was skeptical that Rozier’s shirts, in their parodical and satirical nature, would usurp Easter’s primary market of holiday and party consumers for the mask. The court also noted that because Easter Unlimited marketed the Ghost Face Mask as a costume or novelty item and Rozier specifically marketed his merchandise to his fans, Rozier’s use would not usurp the primary market for the original mask. Therefore, the court weighed this factor in favor of Rozier.
The court’s analysis of parody and satire and Rozier’s use of the Ghost Face Mask is erroneously based on the mask as it was used in the movie Scream. Despite admitting that the parties did not address the issue, the court introduces arguments in favor of fair use based on a “secondary use of a secondary use” theory that should not be applied to the current case. If appealed, the Second Circuit should correct this frightening mistake and base its first factor analysis on the character and purpose of the use as it relates to the underlying work at issue.
The court’s analysis of the fourth factor (the impact of Rozier’s use of the mask on Easter Unlimited’s market) also overlooked important considerations. Namely, the court should have considered the impact of Rozier’s conduct not only on Easter Unlimited’s existing markets, but also on its potential markets such as, in this case, the sporting apparel market. Given that Easter Unlimited was already licensing the Ghost Face Mask for use on t-shirts, it could well have entered the sports apparel market in the future. Analysis of the fourth factor also requires the court to consider the impact on Easter Unlimited’s market if conduct such as Rozier’s had been widespread, which the court apparently did not. The court’s omissions in these respects are likely to have a chilling effect on copyright owners’ ability to financially exploit their works unless the Second Circuit has something to say about it.