                FOR PUBLICATION

  UNITED STATES COURT OF APPEALS
       FOR THE NINTH CIRCUIT


DERECK SELTZER,                        No. 11-56573
               Plaintiff-Appellant,
                                          D.C. No.
                 v.                    2:10-cv-02103-
                                          PSG-PLA
GREEN DAY , INC., a corporation;
GREEN DAY TOURING , INC., a
corporation; GREEN DAY , a
partnership; BILLIE JOE
ARMSTRONG , an individual; FRANK
EDWIN WRIGHT , III, an individual,
AKA Tre Cool; MICHAEL RYAN
PRITCHARD , an individual, AKA
Dirnt Mike; WARNER BROS.
RECORDS, INC., a corporation;
INFECT PRODUCTIONS, a partnership;
ROGER STAUB, an individual;
PERFORMANCE ENVIRONMENTAL
DESIGN , a business entity (form
unknown),
               Defendants-Appellees.
2            SELTZER V . GREEN DAY , INC.

DERECK SELTZER,                            No. 11-57160
               Plaintiff-Appellant,
                                             D.C. No.
                 v.                       2:10-cv-02103-
                                             PSG-PLA
GREEN DAY , INC., a corporation;
GREEN DAY TOURING , INC., a                  OPINION
corporation; GREEN DAY , a
partnership; BILLIE JOE
ARMSTRONG , an individual; FRANK
EDWIN WRIGHT , III, an individual,
AKA Tre Cool; MICHAEL RYAN
PRITCHARD , an individual, AKA
Dirnt Mike; WARNER BROS.
RECORDS, INC., a corporation;
INFECT PRODUCTIONS, a partnership;
ROGER STAUB, an individual;
PERFORMANCE ENVIRONMENTAL
DESIGN , a business entity (form
unknown),
               Defendants-Appellees.


      Appeal from the United States District Court
          for the Central District of California
      Philip S. Gutierrez, District Judge, Presiding

                Argued and Submitted
        February 5, 2013—Pasadena, California

                  Filed August 7, 2013
                  SELTZER V . GREEN DAY , INC.                        3

     Before: Diarmuid F. O’Scannlain, Stephen S. Trott,
           and Richard R. Clifton, Circuit Judges.

                 Opinion by Judge O’Scannlain


                           SUMMARY*


                      Copyright / Fair Use

    The panel affirmed the district court’s summary judgment
in favor of the defendants but vacated the district court’s
award of attorneys’ fees in an artist’s action alleging
violations of the Copyright Act and the Lanham Act in a rock
band’s unauthorized use of an illustration in the video
backdrop of its stage show.

    The panel held that the video backdrop was a fair use
under the Copyright Act. First, the purpose and character of
the use was transformative because the video altered the
expressive content or message of the illustration, and the use
was not overly commercial. Second, the illustration was a
creative work, but its nature included its status as a widely
disseminated work of street art. Third, the defendants copied
most of the illustration, but it was not meaningfully divisible.
Fourth, the video backdrop did not affect the value of the
illustration.




  *
    This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
4               SELTZER V . GREEN DAY , INC.

    The panel affirmed the grant of summary judgment on
Lanham Act claims on the basis that the artist failed to
establish any trademark rights.

    Vacating the district court’s award of attorneys’ fees to
the defendants under the Copyright Act, the panel held that,
despite the defendants’ success on the fair use defense, the
plaintiff did not act objectively unreasonably.


                         COUNSEL

William Nathan Canby, Rosenfeld, Meyer & Susman, LLP,
Beverly Hills, California argued the cause and filed a brief for
the appellant. With him on the briefs were Todd W. Bonder
and Ryan M. Lapine, Rosenfeld, Meyer & Susman, LLP,
Beverly Hills, California.

Peter J. Anderson, Law Offices of Peter J. Anderson, a P.C.,
Santa Monica, CA, argued the cause and filed a brief for
appellees. With him on the briefs were Bruce Isaacs, Wyman
& Isaacs, LLP, Los Angeles, CA, and Lee S. Brenner and
Keri E. Campbell, Kelley Drye & Warren LLP, Los Angeles,
CA.


                          OPINION

O’SCANNLAIN, Circuit Judge:

    We must decide whether a rock band’s unauthorized use
of an artist’s illustration in the video backdrop of its stage
show was a “fair use” under copyright law.
                SELTZER V . GREEN DAY , INC.                    5

                                I

                                A

    Plaintiff Derek Seltzer is an artist and illustrator. In 2003,
he created Scream Icon, a drawing of a screaming, contorted
face. Seltzer made copies of Scream Icon, including large
posters and smaller prints with adhesive backs, which he has
sold and given away. See Appendix A. Many Scream Icon
posters have been plastered on walls as street art in Los
Angeles and elsewhere. Since then, Seltzer has moved on to
other projects, but at times he has used Scream Icon to
identify himself and his work’s presence by placing it on
advertisements for his gallery appearances, and at some point
he licensed it for use in a music video.

    Defendant Roger Staub is a photographer and
professional set-lighting and video designer. In 2008, Staub
photographed a brick wall at the corner of Sunset Boulevard
and Gardner Avenue in Los Angeles which was covered in
graffiti and posters—including a weathered and torn copy of
Scream Icon. See Appendix B. Staub found it “interesting”
and saved this picture in his personal library.

    Defendant Green Day is a rock band, and defendants
Billie Joe Armstrong, Michael Pritchard, and Frank Wright
are its musicians. Green Day has sold over 70 million records
worldwide since its debut in 1987. In May of 2009, Green
Day released its eighth studio album, 21st Century
Breakdown. In anticipation of the 2009–10 tour in support of
this album, Green Day engaged defendant Performance
Environment Design (“PED”) to create the lighting,
pyrotechnic effects, and video backdrops for the concert.
6               SELTZER V . GREEN DAY , INC.

Subsequently, PED arranged for Staub to create the video
backdrops for Green Day’s performances.

                               B

    Staub created a video backdrop for each of the thirty-two
songs on Green Day’s set list. Before making these
backdrops, Staub repeatedly listened to 21st Century
Breakdown and studied the album art, which uses graffiti and
street art as significant visual elements.

    One of the songs for which Staub created a backdrop was
the eighth song on the album, entitled “East Jesus Nowhere.”
Staub’s stated goal was to convey the song’s “mood, tone or
themes.” According to Staub, the theme of the song is “the
hypocrisy of some religious people who preach one thing but
act otherwise. . . . The song is about the violence that is done
in the name of religion.”

    What Staub ultimately created for this song is the
allegedly-infringing work at the heart of this case, an
approximately four-minute-long video. The video depicts a
brick alleyway covered in graffiti. As “East Jesus Nowhere”
is performed, several days pass at an accelerated pace and
graffiti artists come and go, adding new art, posters, and tags
to the brick alleyway. The graffiti includes at least three
images of Jesus Christ, which are defaced over the course of
the video. Throughout the video, the center of the frame is
dominated by an unchanging, but modified, Scream Icon.
Staub used the photograph he had taken at Sunset and
Gardner, cut out the image of Scream Icon and modified it by
adding a large red “spray-painted” cross over the middle of
the screaming face. He also changed the contrast and color
and added black streaks running down the right side of the
               SELTZER V . GREEN DAY , INC.                 7

face. Staub’s image further differs from Scream Icon because
Staub’s original photograph was of a weathered, slightly
defaced, and torn poster. Scream Icon is nonetheless clearly
identifiable in the middle of the screen throughout the video.

    Staub’s video backdrop was played behind Green Day
during the performance of “East Jesus Nowhere” at
approximately seventy concerts from July 3, 2009, through
November 12, 2009, and also during Green Day’s
performance of the song at the MTV Video Music Awards on
September 13, 2009. At some point, Seltzer became aware
that Green Day was using his art and on September 24, 2009
he wrote the band an e-mail alerting them to their
unauthorized use stating that he would like to “work out a
resolution to this issue.” Apparently no resolution was
possible, because on November 19, 2009, Seltzer registered
a copyright in Scream Icon, and his counsel sent Green Day
a cease-and-desist letter. Green Day subsequently stopped
using the video backdrop.

                              C

    In March 2010, Seltzer filed the instant action. His First
Amended Complaint alleges direct and contributory copyright
infringement, violations of the Lanham Act, and various state
law claims. After discovery, defendants (collectively, “Green
Day”) moved for summary judgment. They primarily argued
that Staub’s video backdrop was fair use under 17 U.S.C.
§ 107. The district court agreed and granted summary
judgment on all claims.

    Green Day then moved for attorneys fees under 17 U.S.C.
§ 505. The district court found that Seltzer’s claims had been
objectively unreasonable and granted the motion in full,
8               SELTZER V . GREEN DAY , INC.

awarding the defendants a total of $201,012.50. Seltzer
timely appeals both the grant of summary judgment and the
grant of attorney’s fees.

                              II

    The fair use doctrine “permits and requires courts to avoid
rigid application of the copyright statute when, on occasion,
it would stifle the very creativity which that law is designed
to foster.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
577 (1994) (internal quotation marks omitted).
Consequently, 17 U.S.C. § 107 establishes that fair use of a
copyrighted work is not an infringement of copyright and lays
out four factors to apply when considering whether the use of
a work is “fair”:

       (1) the purpose and character of the use,
       including whether such use is of a commercial
       nature or is for non-profit 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
       on the potential market for or value of the
       copyrighted work.

17 U.S.C. § 107. These four factors must all be explored, and
all the results evaluated together, in light of the purposes of
copyright. Campbell, 510 U.S. at 578.

    Whether Green Day’s use of Seltzer’s Scream Icon
constituted fair use is a mixed question of law and fact that
we review de novo. SOFA Entm’t, Inc. v. Dodger Prods.,
Inc., 709 F.3d 1273, 1277 (9th Cir. 2013). Where no
                SELTZER V . GREEN DAY , INC.                  9

material, historical facts are at issue and the parties dispute
only the ultimate conclusions to be drawn from those facts,
we may draw those conclusions without usurping the function
of the jury. Fisher v. Dees, 794 F.2d 432, 436 (9th Cir.
1986). As the Supreme Court held in Harper & Row
Publishers, Inc. v. Nation Enter., “[w]here the district court
has found facts sufficient to evaluate each of the statutory
factors, an appellate court need not remand for further
factfinding but may conclude as a matter of law that the
challenged use does not qualify as a fair use of the
copyrighted work.” 471 U.S. 539, 564 (1985) (internal
alterations and quotation marks omitted). As in Fisher, “[n]o
material historical facts are at issue in this case. The parties
dispute only the ultimate conclusion to be drawn from the
admitted facts.” 794 F.2d at 436.

                               A

    The first factor in the fair use inquiry is “the purpose and
character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes.”
§ 107(1). The Supreme Court has stated that the “central
purpose” of this factor is to see “whether and to what extent
the new work is transformative.” Campbell, 510 U.S. at 579.
Works of this type “lie at the heart of the fair use doctrine’s
guarantee of breathing space within the confines of copyright,
and the more ‘transformative’ the new work, the less will be
the significance of other factors.” Id. (internal citations
omitted).

    Although transformation is a key factor in fair use,
whether a work is transformative is a often highly contentious
topic. See, e.g., Cariou v. Prince, 714 F.3d 694, 713–14 (2d
Cir. 2013) (Wallace, J., concurring in part and dissenting in
10              SELTZER V . GREEN DAY , INC.

part) (disagreeing with majority as to whether artists’ use of
certain copyrighted photographs was transformative; would
remand for further fact finding); Monge v. Maya Magazines,
Inc., 688 F.3d 1164, 1185–88 (9th Cir. 2012) (M. Smith, J.,
dissenting) (disagreeing with majority as to whether a
magazine’s publication of wedding photographs was
transformative); Bouchat v. Balt. Ravens Ltd. P’ship,
619 F.3d 301, 320–21 (4th Cir. 2010) (Niemeyer, J.,
dissenting) (disagreeing with majority as to whether the
Baltimore Ravens football team’s use of a “Flying B” logo
was transformative). A leading treatise on this topic has
lamented the frequent misuse of the transformation test,
complaining that it has become a conclusory label which is
“all things to all people.” Melville B. Nimmer & David
Nimmer, 4 Nimmer on Copyright § 13.05[A][1][b], 13-
168–70 (2011) (internal quotation marks omitted); see also
id. at 13-168–69 (listing cases which have “erroneous[ly]
with[held]” the transformative label).

      The plethora of cases addressing this topic means there is
no shortage of language from other courts elucidating (or
obfuscating) the meaning of transformation. To navigate
these treacherous waters, we turn to the most definitive
formulation of the test. The Supreme Court in Campbell
stated that one work transforms another when “the new work
. . . adds something new, with a further purpose or different
character, altering the first with new expression, meaning or
message.” Campbell, 510 U.S. at 579. This understanding
was drawn by the Court in large part from Second Circuit
Judge Pierre Leval’s 1990 article in the Harvard Law Review,
Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990).
In that article, Judge Leval further clarified his understanding
of “transformative” works:
                 SELTZER V . GREEN DAY , INC.                    11

        The use must be productive and must employ
        the quoted matter in a different manner or for
        a different purpose from the original. A
        quotation of copyrighted material that merely
        repackages or republishes the original is
        unlikely to pass the test; in Justice Story’s
        words, it would merely “supersede the
        objects” of the original. If, on the other hand,
        the secondary use adds value to the
        original—if the quoted matter is used as raw
        material, transformed in the creation of new
        information, new aesthetics, new insights and
        understandings—this is the very type of
        activity that the fair use doctrine intends to
        protect for the enrichment of society.

Id. at 1111.

    Applying this understanding, Green Day’s use of Scream
Icon is transformative. Green Day used the original as “raw
material” in the construction of the four-minute video
backdrop. It is not simply a quotation or a republication;
although Scream Icon is prominent, it remains only a
component of what is essentially a street-art focused music
video about religion and especially about Christianity (images
of Jesus Christ appear—and are defaced—several times
during the course of the video).

    The message and meaning of the original Scream Icon is
debatable. To us, it appears to be a directionless anguished
screaming face. Seltzer himself testified to his view of the
meaning of the original piece: “It addresses themes of youth
culture, skateboard culture, insider/outsider culture, . . . it’s an
iconic reference to a culture and time in Los Angeles when
12              SELTZER V . GREEN DAY , INC.

the image was made.” But regardless of the meaning of the
original, it clearly says nothing about religion. With the
spray-painted cross, in the context of a song about the
hypocrisy of religion, surrounded by religious iconography,
Staub’s video backdrop using Scream Icon conveys “new
information, new aesthetics, new insights and
understandings” that are plainly distinct from those of the
original piece. At his deposition, Seltzer seemed to
acknowledge as much, when he stated that Staub’s backdrop
“tainted the original message of the image and [] made it now
synonymous with lyrics, a video, and concert tour that it was
not originally intended to be used with.”

     Although the law in this area is splintered, as discussed
above, our conclusion on transformation is generally in line
with other appellate authority on transformative use. In the
typical “non-transformative” case, the use is one which
makes no alteration to the expressive content or message of
the original work. See, e.g., Monge, 688 F.3d at 1176
(magazine publication of photos of secret wedding of
celebrity was not transformative because it did not “alter[] the
first [work] with new expression, meaning or message”)
(second alteration in original); Elvis Presley Enters., Inc. v.
Passport Video, 349 F.3d 622, 629 (9th Cir. 2003) (use of
copyrighted clips of Elvis’s television appearances was not
transformative when the clips were “played without much
interruption, if any, . . . [and] serve[d] the same intrinsic
entertainment value that is protected by Plaintiffs’
copyrights.”), overruled on other grounds as stated in
Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d
989, 995 (9th Cir.2011) (per curiam); L.A. News Serv. v. CBS
Broad., Inc., 305 F.3d 924, 938 (9th Cir. 2002) (“Merely
plucking the most visually arresting excerpt from LANS’s
nine minutes of footage cannot be said to have added
               SELTZER V . GREEN DAY , INC.                13

anything new.”), as amended 313 F.3d 1093 (9th Cir. 2002);
Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 79 (2d
Cir. 1997) (use of a poster as decoration on a TV show not
transformative because it was used for “precisely a central
purpose for which it was created” and defendants had done
nothing with the poster to add anything new).

    In contrast, an allegedly infringing work is typically
viewed as transformative as long as new expressive content
or message is apparent. This is so even where—as here—the
allegedly infringing work makes few physical changes to the
original or fails to comment on the original. See, e.g.,
Cariou, 714 F.3d at 708 (artist who altered and incorporated
several copyrighted photographs into a series of paintings and
collages engaged in transformative use as to most of the
paintings because the images were presented with
“fundamentally different aesthetic”); Bill Graham Archives
v. Dorling Kindersley Ltd., 448 F.3d 605, 608–09 (2d Cir.
2006) (use of concert posters in a timeline in a book on the
history of the Grateful Dead was transformative; their use
was as “historical artifacts” rather than for “artistic
expression and promotion”); Blanch v. Koons, 467 F.3d 244,
252–53 (2d Cir. 2006) (artist who incorporated and altered
copyrighted fashion photograph of a pair of women’s legs as
part of a larger work of art engaged in a transformative use);
Kelly v. Arriba Soft Corp., 336 F.3d 811, 818–20 (9th Cir.
2003) (use of exact replicas of artist’s photographs as
“thumbnail images” in a search engine was transformative
because their purpose was completely transformed from their
original use as fine art); L.A. News Serv., 305 F.3d at 938–39
(inclusion of copyrighted clip in video montage, using editing
to increase dramatic effect, was transformative).
14              SELTZER V . GREEN DAY , INC.

    We conclude, therefore, that Green Day’s use of Scream
Icon was transformative. Furthermore, although the statute
instructs us to consider the “commercial nature” of a work
(and Green Day’s concert was undoubtedly commercial in
nature) “the degree to which the new user exploits the
copyright for commercial gain—as opposed to incidental use
as part of a commercial enterprise—affects the weight we
afford commercial nature as a factor.” Elvis Presley Enters.,
349 F.3d at 627. Green Day’s use of Scream Icon was only
incidentally commercial; the band never used it to market the
concert, CDs, or merchandise. Under these circumstances,
the first fair use factor weighs in Green Day’s favor.

                               B

    The second factor that § 107 instructs us to consider is
“the nature of the copyrighted work” which recognizes the
fact that “some works are closer to the core of intended
copyright protection than others.” Campbell, 510 U.S. at 586.
Scream Icon is a creative work, meriting strong protection
under this factor.

     Mitigating this factor in favor of Green Day is that we are
instructed to consider the extent to which a work has been
published. Harper & Row Publishers, Inc., 471 U.S. at 564
(“The fact that a work is unpublished is a critical element of
its ‘nature.’”); Kelly, 336 F.3d at 820. “Published works are
more likely to qualify as fair use because the first appearance
of the artist’s expression has already occurred.” Kelly,
336 F.3d at 820. Here, as in Kelly, Scream Icon was widely
disseminated, both on the internet and on the streets of Los
Angeles before Green Day used it in their concerts.
Accordingly, Seltzer controlled the “first public appearance”
                SELTZER V . GREEN DAY , INC.                15

of his work. See Harper & Row Publishers, Inc., 471 U.S. at
564. This tends to weigh in favor of the fair use of that work.

    Considering this factor as a whole, it weighs only slightly
in Seltzer’s favor.

                              C

    The third factor looks to the quantitative amount and
qualitative value of the original work used in relation to the
justification for that use. SOFA Entm’t, 709 F.3d at 1279; see
also Campbell, 510 U.S. at 586. This factor captures the fact
that an allegedly infringing work that copies little of the
original is likely to be a fair use. See, e.g., SOFA Entm’t,
709 F.3d at 1279 (holding that Ed Sullivan’s seven-second
introduction of the Four Seasons band was both qualitatively
and quantitatively insignificant). Here, Green Day copied
most of Scream Icon, both quantitatively and qualitatively.

    However, unlike an episode of the Ed Sullivan show or a
book manuscript, Scream Icon is not meaningfully divisible.
Given that fact, this court has acknowledged that this factor
will not weigh against an alleged infringer, even when he
copies the whole work, if he takes no more than is necessary
for his intended use. Kelly, 336 F.3d at 820–21. As the
Supreme Court has recognized, this factor necessarily
overlaps somewhat with the first factor—the “extent of
permissible copying varies with the purpose and character of
the use.” Campbell, 510 U.S. at 586–87. Here, as in Kelly,
the use of the entire work was necessary to achieve Green
Day’s “new expression, meaning or message.” Id. at 579; see
also Kelly, 336 F.3d at 821.

   Thus, this factor does not weigh against Green Day.
16              SELTZER V . GREEN DAY , INC.

                              D

    The fourth factor asks what effect the allegedly infringing
use has on the “potential market for or value of the
copyrighted work.” 17 U.S.C. § 107(4). This factor should
consider “the extent of market harm caused by the particular
actions of the alleged infringer [and] also whether
unrestricted and widespread conduct of the sort engaged in by
the defendant would result in a substantially adverse impact
on the potential market for the original.” Campbell, 510 U.S.
at 590 (internal quotation marks and citations omitted).
Where the allegedly infringing use does not substitute for the
original and serves a “different market function,” such factor
weighs in favor of fair use. Id. at 591; SOFA Entm’t,
709 F.3d at 1280.

    At Seltzer’s deposition, he repeatedly testified that the
value of his work was unchanged, but that he subjectively did
not care for Green Day’s use of his art. He admitted that no
one had ever told him that he would not buy his work as a
result of Green Day’s use; instead, he claimed that Scream
Icon was “tarnished” for him personally, but he did not view
the piece as having lost any value.

    Additionally, Green Day presented evidence that its video
backdrop did not perform the same “market function” as the
original. The original, created six years before Green Day’s
use, was primarily intended as street art. Green Day’s
allegedly infringing use, on the other hand, was never placed
on merchandise, albums, or promotional material and was
used for only one song in the middle of a three hour touring
show. In this context, there is no reasonable argument that
conduct of the sort engaged in by Green Day is a substitute
for the primary market for Seltzer’s art.
               SELTZER V . GREEN DAY , INC.                17

    This factor also considers any impact on “traditional,
reasonable, or likely to be developed markets.” Ringgold,
126 F.3d at 81. At some point, according to Seltzer’s
declaration, Scream Icon was used in a music video by a band
named “People.” Seltzer provides no additional information
about this licensing, including how much revenue he earned
as a result, how the music video was used by the band, or
how the music video used Scream Icon. Without further
context, this fact does not suffice to show that Green Day’s
use harmed any existing market or a market that Seltzer was
likely to develop.

   Thus, this factor weighs in Green Day’s favor as well.

                              E

    Our evaluation of all four factors inclines us to the
ultimate conclusion that Green Day’s use of Seltzer’s Scream
Icon was fair. The purpose and character of the use was
transformative and not overly commercial. The nature of the
work includes its status as a widely disseminated work of
street art. Green Day’s use of the work was not excessive in
light of its transformative purpose. And Green Day’s use did
not affect the value of the piece or of Seltzer’s artwork in
general. Additionally, we note that factor one and factor four
have “dominated the case law” and are generally viewed as
the most important factors; Green Day wins on both of these
key points. Monge, 688 F.3d at 1171. Therefore, we are
satisfied that the district court did not err in granting
summary judgment on Seltzer’s copyright infringement
claims.
18              SELTZER V . GREEN DAY , INC.

                              III

    The district court also granted summary judgment to
Green Day on Seltzer’s Lanham Act claims. The Lanham
Act extends liability to any person who “uses in commerce
any word, term, name, symbol, or device . . . which is likely
to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection or association of such person with
another person . . . .” 15 U.S.C. § 1125(a).

    The district court concluded that Seltzer failed to present
evidence showing that he used the image as a mark in the sale
of goods or services—that is, that he failed to establish
trademark rights at all. In order to acquire trademark rights,
the mark must be used in the “ordinary course of trade” on
goods or containers, or, if the nature of the goods makes that
impractical, on documents associated with the goods or their
sale. Brookfield Commc’ns v. West Coast Entm’t Corp.,
174 F.3d 1036, 1051–52 (9th Cir. 1999) (citing 15 U.S.C.
§ 1127).

    Seltzer argues that Scream Icon’s placement on certain
advertisements for his appearance at an art gallery show was
sufficient to establish trademark rights. But Seltzer has not
presented any evidence that the use of the mark was
“sufficiently public to identify or distinguish the marked
goods in an appropriate segment of the public mind.” Id. at
1052 (quoting New West Corp. v. NYM Co. of Cal., Inc.,
595 F.2d 1194, 1200 (9th Cir. 1979)). Seltzer has failed to
explain how these advertisements were distributed, who
might have seen them, when they were distributed, to what
shows they were connected and what was sold at those shows,
or any other facts which might be necessary to evaluate
whether Scream Icon is deserving of trademark protection.
                   SELTZER V . GREEN DAY , INC.                        19

   Therefore the district court correctly granted summary
judgment to Green Day on Seltzer’s Lanham Act claims.1

                                   IV

    Finally, the district court awarded Green Day over
$200,000 in attorneys fees. A district court’s award of
attorneys fees under 17 U.S.C. § 505 is reviewed for abuse of
discretion. Fantasy, Inc. v. Fogerty, 94 F.3d 553, 556 (9th
Cir. 1996). Under the abuse of discretion standard, the
district court’s findings of fact or its application of the legal
standard to those findings of fact must be “illogical,
implausible, or without support in inferences that may be
drawn from facts in the record.” U.S. v. Hinkson, 585 F.3d
1247, 1251 (9th Cir. 2009) (en banc).

    The question presented in a case where a defendant makes
a winning fair use defense is whether the successful defense
of the action furthered the purposes of the Copyright Act.
Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 816
(9th Cir. 2003). It is important to recall that the Supreme
Court rejected the so-called British Rule where the loser pays;
rather, attorneys fees are left up to the discretion of the
district court. See Fogerty v. Fantasy, 510 U.S. 517, 533
(1994) (citing 17 U.S.C. § 505). As the district court correctly
recited, courts deciding whether to award attorneys fees can
look to five non-exclusive factors: (1) the degree of success


  1
     This court has “consistently held that state common law claims of
unfair competition and actions pursuant to California Business and
Professions Code § 17200 are ‘substantially congruent’ to claims made
under the Lanham Act.” Cleary v. News Corp., 30 F.3d 1255, 1262–63
(9th Cir. 1994). W e similarly affirm the district court’s grant of summary
judgment on these claims.
20              SELTZER V . GREEN DAY , INC.

obtained; (2) frivolousness; (3) motivation; (4) the objective
unreasonableness of the losing party’s factual and legal
arguments; and (5) the need, in particular circumstances, to
advance considerations of compensation and deterrence. See
Fogerty, 510 U.S. at 534 n.19.

    Significantly, the district court found that Seltzer’s claim
was objectively unreasonable. In making this finding, the
district court relied on the facts that Seltzer lost at summary
judgment, that three of the four fair use factors were in Green
Day’s favor, and that Seltzer’s deposition testimony
“effectively conceded that the use was transformative.” This
is in reference to Seltzer’s statement at his deposition,
referenced above, that the new work “tainted the original
message” and “devalue[d] the original intent” of Scream
Icon.

     But, the mere fact that Seltzer lost cannot establish his
objective unreasonability. See Harris Custom Builders, Inc.
v. Hoffmeyer, 140 F.3d 728, 730 (7th Cir. 1998) (“How the
court ruled, simply put, is not a proper concern [in
determining the availability of § 505 fees].”). Further, we
conclude that Green Day only won on two of the four fair use
factors, rather than three as the district court concluded. And
in any event, Seltzer’s statement at his deposition—which the
district court viewed as a “concession”—only expressed his
opinion and could not concede the transformative nature of
Green Day’s work. See Cariou, 714 F.3d at 707 (“What is
critical is how the work in question appears to the reasonable
observer, not simply what an artist might say about a
particular piece or body of work . . . . Rather than confining
our inquiry to [the artist’s] explanations of his artwork, we
instead examine how the artworks may ‘reasonably be
perceived’ . . .”). Thus, the facts relied on by the district
                SELTZER V . GREEN DAY , INC.                 21

court do not lend any meaningful support to the notion that
Seltzer’s case was objectively unreasonable when he brought
it.

    This was a close and difficult case. We concluded that
Seltzer’s work was transformed by Green Day’s use. But that
transformation was far from obvious given Green Day’s only
slight alterations to the original. Furthermore, of the
remaining three factors, one was in Seltzer’s favor, one was
in Green Day’s favor, and one was neutral. There is simply
no reason to believe that Seltzer “should have known from
the outset that [his] chances of success in this case were slim
to none.” SOFA Entm’t, 709 F.3d at 1280.

    Therefore, we conclude that the district court clearly erred
in finding that Seltzer acted objectively unreasonably, and
vacate the award of attorneys fees.

   No. 11-56573 AFFIRMED; No. 11-57160 VACATED
AND REMANDED. All parties to bear their own costs on
appeal.
22   SELTZER V . GREEN DAY , INC.




           APPENDICES
Appendix A
Appendix B
