The Second Circuit is set to consider Fox News v TVEyes, with both parties having submitted their briefs (see Fox News brief and TVEyes brief). The appeal represents the latest evolution of the “transformative use” standard that Judge Pierre Leval first wrote about in his seminal 1990 Harvard Law Review article, Toward a Fair Use Standard.

When Judge Leval articulated his idea of “transformative use” as the key to understanding fair use, his goal was to provide “a better understanding of fair use and greater consistency and predictability of court decisions.” He perhaps could not foresee just how expansively this idea would broaden fair use. 1See Statement of Professor June Besek at a hearing in front of the House Judiciary Committee on fair use for one account of this expansion.

In fact, when the Supreme Court embraced Leval’s “transformative use” in Campbell v. Acuff-Rose just a few years after his article was published, it took care to limit any future expansion. While the Court noted that the fair use doctrine should recognize that a parody of a copyrighted work “must be able to ‘conjure up’ at least enough of that original to make the object of its critical wit recognizable”, it followed up by remarking, “This is not, of course, to say that anyone who calls himself a parodist can skim the cream and get away scot free.” And the Court, though finding the work at issue to be a transformative parody, stopped short of declaring it fair use. It remanded to the lower court on the issue of the amount and substantiality of the original work used, saying, “we express no opinion whether repetition of the bass riff is excessive copying, and we remand to permit evaluation of the amount taken, in light of the song’s parodic purpose and character, its transformative elements, and considerations of the potential for market substitution sketched more fully below.” 2The parties subsequently settled; see Did Campbell v Acuff-Rose find 2 Live Crew’s song to be fair use?

Justice Kennedy was even more cautious in a concurring opinion that he wrote. While he agreed with the majority’s conclusion, he wrote separately to reiterate “the importance of keeping the definition of parody within proper limits.” He concluded by saying, “If we allow any weak transformation to qualify as parody, … we weaken the protection of copyright.”

Over 20 years later, Judge Leval would revisit the doctrine he invented in the Google Books case, Authors Guild v Google. And if he didn’t contemplate the limits of transformative use in his original article, he recognized them here, beginning his opinion by writing, “This copyright dispute tests the boundaries of fair use.”

Although Leval’s ultimate holding that Google’s copying was fair use can seem astonishing in its breadth, his opinion at least recognizes potential outer limits of the doctrine. He took care to confirm that a “would-be fair user of another’s work must have justification for the taking” (emphasis added). 3See What did Google Books Decision do to Cariou v Prince for a discussion of Leval’s focus on justification. He observed that Google’s copying is done to provide “dissemination of information about the original works”, not “the re-transmission, or re-dissemination, of their expressive content.” He noted that while Google makes copies of entire works, it does not “reveal” those copies to the public—the copying is done to create a searchable index, and Google provides snippets of the copies, but only enough to provide context to help a searcher “evaluate whether the book falls within the scope of her interest.” And finally, he held that a secondary user like Google, who makes copies for an internal, transformative purpose, must employ security measures to ensure it does not unreasonably expose copyrighted works to the public.

If Google Books tested the outer bounds of fair use, TVEyes threatens to break them.

TVEyes is a video news clipping service which “monitors and records all content broadcast by more than 1,400 television and radio stations twenty-four hours per day, seven days per week, and transforms the content into a searchable database for its subscribers.” 4Fox News Network v TVEyes, 43 F.Supp. 3d 379 (SDNY 2014). For $500 a month, subscribers can play unlimited high definition clips from TVEyes’ database, archive them online, download them to their own devices, and email and share them with unlimited numbers of nonsubscribers. And TVEyes offers all of this without having permission from any copyright owner or broadcaster. 5Nor, for that matter, from the MVPDs it used to receive content. Satellite MVPD DirecTV sued TVEyes for alleged unlawful retransmission of a pay-TV signal. The two parties reached a settlement in November 2015, with TVEyes agreeing to cease obtaining content for its service from DirecTV. See DirecTV Settles Fight Against TVEyes. In July 2013, Fox News Network sued TVEyes for copyright infringement. TVEyes claimed fair use.

What’s astonishing is not the sheer breadth of what TVEyes sought. What’s astonishing is that the District Court agreed. 6See Fox News v TVEyes: Fair Use Transformed for more discussion about the decision. In a September 2014 decision on cross motions for summary judgment, the Southern District Court of New York held that “TVEyes’ copying of Fox News’ broadcast content for indexing and clipping services to its subscribers constitutes fair use.” The court called for further development of the record regarding other functions provided by TVEyes. On renewed motions for summary judgment, the court held that TVEyes’ archiving function—which enabled subscribers to save an unlimited number of clips indefinitely—was fair use, and its emailing feature could be fair use provided it “develops and implements adequate protective measures.” However, it did hold that its downloading feature and date/time search functions were not a fair use.

There would seem to be a clear cut case against fair use on all counts. TVEyes’ purpose for copying 1,400 stations 24/7 is to deliver portions of them wholesale to its subscribers. It is a for-profit entity financially benefiting from providing access to the works. It does not transform the works in any way save to index them. The nature of the works being copied runs across the entire spectrum, from factual to fictional, from news to entertainment and more. Entire works are being copied. While TVEyes doesn’t deliver entire works, only clips up to 10 minutes, there is no limit on the clips, and subscribers can easily piece together entire programs (in high resolution). And the market harm was clearly established by the record—there is not only harm to existing, “traditional” television revenue sources but also to existing clip licensing markets and emerging online revenue sources.

But the court read the record in an idiosyncratic way and applied a number of novel concepts unsupported by case law. It primarily fixated on potential fair uses of the works by TVEyes’ subscribers such as media criticism—and that, in enabling such uses, TVEyes’ own copying and delivery of copyrighted works becomes fair use.

On appeal, TVEyes argues that the court didn’t go far enough. It is asking the Second Circuit to hold that all of its functions, including email, download, and date/time search, are “protected fair use.” TVEyes focuses almost entirely on what it enables its subscribers to do, asserting that its services allow them to engage with the copyrighted works in putative transformative purposes—essentially arguing that it should be allowed to stand in the shoes of its customers when it comes to fair use.

If the Second Circuit were to accept these arguments, it would undermine the principles that fair use is based on and, consequently, the principles of copyright law itself.

Fair use has historically been seen as a corollary to copyright law, available in those circumstances when unauthorized use of an existing work furthers rather than impedes the aims of copyright. 7See Campbell v. Acuff-Rose, 510 US 569, 574 (1994), “From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts…’; Harper & Row, Publishers v. Nation Enterprises, 471 US 539, 549 (1985), quoting H. Ball, Law of Copyright and Literary Property 260 (1944), “[T]he author’s consent to a reasonable use of his copyrighted works ha[d] always been implied by the courts as a necessary incident of the constitutional policy of promoting the progress of science and the useful arts, since a prohibition of such use would inhibit subsequent writers from attempting to improve upon prior works and thus … frustrate the very ends sought to be attained.” It is necessarily limited—in ordinary cases, securing authors’ exclusive rights furthers the aims of copyright, and the market promotes “the progress of science and the useful arts.” Fair use serves as a complement by either privileging certain justified uses like news reporting and criticism, or excusing uses that by custom are considered reasonable or outside an author’s control. 8See A. Latman, Fair Use of Copyrighted Works, Copyright Office Revision Study 14 (1958). Some, including Leval, have described fair use as a mechanism for drawing a boundary line between protected and unprotected uses. 9See Google Books at 213, stating the crucial fair use question was “how to define the boundary limit of the original author’s exclusive rights”; Folsom v Marsh, 9 F. Cas 342 (D. Mass. 1841), “no one can doubt that a reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism. On the other hand, it is as clear, that if he thus cites the most important parts of the work, with a view, not to criticise, but to supersede the use of the original work, and substitute the review for it, such a use will be deemed in law a piracy. A wide interval might, of course, exist between these two extremes, calling for great caution and involving great difficulty, where the court is approaching the dividing middle line which separates the one from the other.”

But however fair use is conceptualized, it should be self-evident that too broad of an application would undermine the goals of copyright instead of promoting them. As Justice Kennedy said in his Campbell concurrence, “[U]nder-protection of copyright disserves the goals of copyright just as much as overprotection, by reducing the financial incentive to create.” Unless one does not see any value in copyright, and views fair use as merely a mechanism for nullifying the protections authors currently see under the law, one should recognize that fair use has its proper limits. We’ll see if the Second Circuit finds that TVEyes goes beyond those limits.

References   [ + ]

1. See Statement of Professor June Besek at a hearing in front of the House Judiciary Committee on fair use for one account of this expansion.
2. The parties subsequently settled; see Did Campbell v Acuff-Rose find 2 Live Crew’s song to be fair use?
3. See What did Google Books Decision do to Cariou v Prince for a discussion of Leval’s focus on justification.
4. Fox News Network v TVEyes, 43 F.Supp. 3d 379 (SDNY 2014).
5. Nor, for that matter, from the MVPDs it used to receive content. Satellite MVPD DirecTV sued TVEyes for alleged unlawful retransmission of a pay-TV signal. The two parties reached a settlement in November 2015, with TVEyes agreeing to cease obtaining content for its service from DirecTV. See DirecTV Settles Fight Against TVEyes.
6. See Fox News v TVEyes: Fair Use Transformed for more discussion about the decision.
7. See Campbell v. Acuff-Rose, 510 US 569, 574 (1994), “From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts…’; Harper & Row, Publishers v. Nation Enterprises, 471 US 539, 549 (1985), quoting H. Ball, Law of Copyright and Literary Property 260 (1944), “[T]he author’s consent to a reasonable use of his copyrighted works ha[d] always been implied by the courts as a necessary incident of the constitutional policy of promoting the progress of science and the useful arts, since a prohibition of such use would inhibit subsequent writers from attempting to improve upon prior works and thus … frustrate the very ends sought to be attained.”
8. See A. Latman, Fair Use of Copyrighted Works, Copyright Office Revision Study 14 (1958).
9. See Google Books at 213, stating the crucial fair use question was “how to define the boundary limit of the original author’s exclusive rights”; Folsom v Marsh, 9 F. Cas 342 (D. Mass. 1841), “no one can doubt that a reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism. On the other hand, it is as clear, that if he thus cites the most important parts of the work, with a view, not to criticise, but to supersede the use of the original work, and substitute the review for it, such a use will be deemed in law a piracy. A wide interval might, of course, exist between these two extremes, calling for great caution and involving great difficulty, where the court is approaching the dividing middle line which separates the one from the other.”

In recent years, there have been some attempts to characterize copyright as a government subsidy. Tom Bell, for example, argues that copyrights should not be considered “property” but should instead be considered to belong “to a bestiary of modern, artificial, statutory privileges, such as welfare benefits, farm subsidies… and taxi medallions.” 1Tom W. Bell, Copyright Porn Trolls, Wasting Taxi Medallions, and the Propriety of “Property”, 18 Chap. L. Rev. 799, 813 (2015). Similar charges can be found by other advocates, calling copyright a “subsidy“, a “government subsidy“, or a “government-created subsidy.”

The reason for doing so is primarily rhetorical: at the very least, “subsidy” suggests a higher level of scrutiny than “property” or “right.” At most, anything labelled a government subsidy is treated with the highest level of skepticism. Adopting the label of “subsidy” thus replaces a lot of persuasive work that would otherwise need to be done.

But a Federal Circuit decision last month undermines the characterization of copyright as a government subsidy. The decision, In re Tam, involves trademarks, but its reasoning is both implicitly and explicitly applicable to copyright.

In re Tam

In re Tam looks at the First Amendment implications of federal trademark registration. The Federal Circuit begins by noting that trademarks both “protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get” and ensure that trademark holders can protect their “investment from . . . misappropriation by pirates and cheats.” Trademarks may be protected through state and common law. The Lanham Act was passed by Congress to provide a federal system of registering and protecting trademarks.

Federal registration of a trademark by a markholder is optional but confers important substantive and procedural rights. These rights include:

  • Exclusive nationwide use of the mark (common law trademark is limited to the geographic area where the mark is actually used)
  • A presumption of validity, and incontestability after five years of consecutive post-registration use
  • Ability to sue in federal court for trademark infringement
  • Ability to recover treble damages for willful infringement
  • Ability to obtain assistance of US Customs and Border Protection to restrict importation of counterfeit goods
  • Qualification for a simplified process for obtaining protection of works in foreign countries that are members of the Paris Convention
  • A complete defense to state or common law claims of trademark dilution.

Section 2(a) of the Lanham Act, the section at issue here, bars registration of marks that, among other things, “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

In 2011, Simon Shiao Tam filed an application to register a trademark in the name of his band, “The Slants”, an “Asian-American dance rock band.” A USPTO examiner denied the registration, finding it disparaging. The decision was affirmed by the Trademark Trial and Appeal Board and the Federal Circuit, but the Federal Circuit sua sponte ordered a rehearing en banc to consider whether refusal of disparaging trademarks implicated the First Amendment.

The en banc panel first held that Section 2(a) denies important legal rights to private speech based on its content. It is thus presumptively invalid and can only be justified if the government can prove that it is “narrowly tailored to serve compelling state interests.” The court states that “no argument has been made that the measure survives such scrutiny.”

The government also argued that Section 2(a) does not implicate the First Amendment at all, asserting that denial of trademark registration does not prohibit speech, that trademark registration is government speech, or that trademark registration is a government subsidy. The Federal Circuit rejected all of these arguments.

The third of these arguments is most relevant to the discussion above. As the Federal Circuit explains, the key distinction here is between Congress’s ability to direct government spending and a constitutional prohibition against denying a “benefit to a person on a basis that infringes his constitutionally protected interests—especially, his interest in freedom of speech.” The Constitution’s Spending Clause, after all, provides Congress discretion over the ability to tax and spend for the general welfare, which includes “‘the authority to impose limits on the use of such funds to ensure they are used in the manner Congress intends,’ even when  these limits exclude protected speech or other constitutionally protected conduct.” However, this authority does not permit Congress “to attach ‘conditions that seek to leverage funding to regulate speech outside the contours of the program itself.'” This is admittedly not a clear distinction, but in essence, “Congress cannot recast a condition on funding as a mere definition of its program in every case, lest the First Amendment be reduced to a simple semantic exercise.”

But the Federal Circuit doesn’t reach this distinction because it rejects the government’s threshold argument, saying, “Trademark registration does not implicate Congress’s power to spend or to control use of government property. Trademark registration is not a subsidy.” It rejects all of the government’s counterarguments, observing that “The restriction on the registration of disparaging marks bears no relation to the objectives, goals, or purpose of the federal trademark registration program.”

The court next underscores the importance of its holding.

Were we to accept the government’s argument that trademark registration is a government subsidy and that therefore the government is free to restrict speech within the confines of the trademark program, it would expand the “subsidy” exception to swallow nearly all government regulation.

Characterizing something as a subsidy invites all sorts of government interference, including that which might regulate speech.

Application to copyright law

The holding in In re Tam applies just as much to copyright as it does to trademark.

In the discussion that follows its rejection of the government’s subsidy argument, the court observes the resemblance between trademark registration and copyright registration. It says that under the logic of the government’s approach, Congress could similarly prohibit the registration of copyrighted works which contain racial slurs or religious insults. “This idea—that the government can control speech by denying the benefits of copyright registration to disfavored speech—is anathema to the First Amendment.” The court notes that the government agrees that copyright registration is protected by the First Amendment, “But the government has advanced no principled reason to treat trademark registration differently than copyright registration for present purposes.”

The Federal Circuit is explicit that there is no daylight between its trademark holding and one that would involve copyright. But the relationship between the two does not stop there. In fact, comparisons to copyright and copyright registration are pervasive throughout the court’s opinion. For example, the court responds to the government’s argument that “accoutrements of registration—such as the registrant’s right to attach the ® symbol to the registered mark, the mark’s placement on the Principal Register, and the issuance of a certificate of registration—amount to government speech.” It says if that was the case, then the same would be true for copyright registration, since that has identical accoutrements. The court observes that “the government would be free, under this logic, to prohibit the copyright registration of any work deemed immoral, scandalous, or disparaging to others.” It concludes that “This sort of censorship is not consistent with the First Amendment or government speech jurisprudence.”

It again draws parallels to copyright when it rejects the government’s argument that federal funding of the Patent and Trademark Office brings trademark registration within the ambit of the Spending Clause, noting that the Copyright Office likewise receives appropriations, but copyright registration is not a subsidy.

So while the Federal Circuit’s holding is about trademark, its reasoning clearly and directly extends to copyright. And its conclusion is clear: not only is copyright not a government subsidy, but to mischaracterize it as such would undermine free speech protections.

References   [ + ]

1. Tom W. Bell, Copyright Porn Trolls, Wasting Taxi Medallions, and the Propriety of “Property”, 18 Chap. L. Rev. 799, 813 (2015).

What can we expect for US copyright policy in 2016?

As I did last year, I’d like to take a brief look at what developments we may see in the copyright policy arena over the next twelve months.

House Judiciary Committee copyright review

Last year the House Judiciary Committee brought the first phase of its copyright review process to a close. Over the course of two years, the Committee had held a series of twenty hearings, featuring 100 witnesses, covering a broad array of topics. Chairman Goodlatte announced the next step would consist of meeting one on one with stakeholders to discuss their priorities and positions regarding copyright law. The Committee also traveled to Nashville, Silicon Valley, and Los Angeles as part of a “listening tour” to hear from different parties.

The ultimate outcome of the review process is still undetermined. A number of bills have been introduced addressing issues such as music licensing (the Fair Play Fair Pay Act and Songwriter Equity Act), resale royalties (American Royalties Too Act), and embedded software (You Own Devices Act). None of these bills have advanced since being introduced.

US Patent and Trademark Office

This year will likely see the release of an Internet Policy Task Force’s (IPTF) White Paper on copyright policy in the digital era. In 2013, the IPTF—a Department of Commerce task force composed of Commerce bureaus including the USPTO’s Office of Policy and International Affairs and the National Telecommunications and Information Administration—released a Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy that examined the current legal framework related to copyright and the internet. According to remarks by PTO Director Michelle Lee, the forthcoming White Paper will contain policy recommendations on three issues: “The appropriate calibration of statutory damages; [t]he application of the First Sale doctrine to digital transmissions; and the legal status of remixes.”

Copyright Office

The Copyright Office looks like it will be keeping busy this year. At the end of 2015, the Copyright Office dropped not one but three requests for public comment on studies it is initiating. The most recent of these will look at the impact and effectiveness of the safe harbor provisions contained in Section 512 (the DMCA safe harbors). As Register Pallante observed in her testimony at the final copyright review hearing in April, “In the nearly twenty years since Congress enacted the DMCA, courts have stepped in to fill perceived gaps in the statutory framework, often interpreting provisions in ways that some believe run counter to the very balance that the DMCA sought to achieve. … The current online environment is vastly changed from the bulletin-board era in which Congress enacted the DMCA in 1998.”

The other two studies are closely related, looking at software-enabled consumer products and Section 1201 of the Copyright Act (which prohibits the circumvention of technological protection measures). As more and more everyday consumer devices—everything from toasters to tractors—include copyrighted software, a host of issues regarding the “impact of existing copyright law on innovation and consumer uses” are emerging. The Office is engaging in a separate Section 1201 study to examine more closely the anti-circumvention provisions and triennial rulemaking process for exemptions to those provisions.

The Office is collecting public input in all three studies throughout the first several months of 2016. It has stated plans for public meetings for each of these studies following the comment period, so we may see one or more of those later in the year. The software-enabled consumer products study was initiated as a result of a request from Senators Grassley and Leahy who asked that it be completed by December 15, 2016.

Still outstanding are reports on mass digitization, visual works, and making available; perhaps we’ll see one or more of these issued in 2016.

Copyright Office modernization

The operation of the Copyright Office itself promises to remain an active area of development in 2016. The department’s resources and functions—most notably its IT and technology—have been the focus of increasing attention. In the past year and a half, the Office’s operations have been discussed at an oversight hearing, a copyright review hearing, and a House Admin hearing. Last year, the issue was also explored in House and Senate appropriations hearings along with a GAO report. The Office itself most recently underscored the need for modernization in its 2016-2020 Strategic Plan.

In December, Representatives Marino, Chu, and Comstock introduced legislation (the Copyright Office for the Digital Economy, or CODE, Act) that would address the significant structural challenges facing the Office by providing it with more autonomy over its budget and technology. It is likely we will see additional Copyright Office modernization developments over the next twelve months.

Library of Congress

Given that the US Copyright Office is a department within the Library of Congress and acts under its direction and supervision, who the next head of the Library will be may have copyright policy implications.

The most recent Librarian, Dr. James Billington, announced on June 10 he would retire at the end of the year. He subsequently stepped down three months early, on September 30, and deputy Librarian David Mao has been serving as Acting Librarian since then. Although names of some potential candidates have floated in the press, no one has been nominated yet.

The Administration would presumably want to have a Librarian nominated and confirmed before the end of the President’s term next January, so it’s reasonable to expect a new Librarian some time in 2016, but time is running short.

Trans-Pacific Partnership

In October, trade ministers from the twelve Trans-Pacific Partnership (TPP) nations announced the conclusion of negotiations, paving the way for the major trade agreement to go into effect. The US Trade Representative released the full text of the agreement in November, which covers a broad array of issues, including standards for intellectual property protections like copyright.

Conclusion of the agreement triggers a process ultimately leading to adoption. Over 2016, we will see an International Trade Commission analysis of the economic impact of the TPP, as well as any draft legislation required for implementation (the TPP’s copyright provisions should not require any legislative changes since they are consistent with US law). Though the agreement is a top priority for the Administration, it remains to be seen, whether the agreement will make it in front of Congress before the end of the year.

In closing, I’d note that the question of what we can expect in 2016 cannot help but be shaped by the November Presidential election. Though copyright has not historically been an election (or even partisan) issue, the focus on the contest will no doubt shape what policymakers do (or don’t do) in the copyright space. One immediate consequence of the election is an abbreviated Congressional calendar; the House will be in session just 111 days this year, the least amount of workdays since 2006.

On Friday, the Second Circuit published its long-awaited decision in Authors Guild v. Google, holding that the Google Books project was fair use. The litigation has extended over a decade, and the court’s opinion ably recounts the factual and legal background so there is no need to repeat that here. Surely it will provide fodder for plenty of commentary over the coming months, but for now, I wanted to highlight an ancillary point: the court’s apparent overlook of its fair use holding in Cariou v. Prince.

Cariou involved the appropriation, without permission, by celebrity artist Richard Prince of over thirty photos taken by professional photographer Patrick Cariou, to create a series of new works. Prince asserted a fair use defense after Cariou sued him for copyright infringement. The district court rejected the fair use defense. 1Cariou v. Prince, 784 F.Supp.2d 337 (SDNY 2011). Key to its holding was its response to Prince’s assertion that “use of copyrighted materials as raw materials in creating ‘appropriation art’ which does not comment on the copyrighted original is a fair use.” The court disagreed, saying it was “aware of no precedent holding that such use is fair absent transformative comment on the original.”

To the contrary, the illustrative fair uses listed in the preamble to § 107—“criticism, comment, news reporting, teaching […], scholarship, [and] research”—all have at their core a focus on the original works or their historical context, and all of the precedent this Court can identify imposes a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works.

On appeal, the Second Circuit reversed, finding all but five of Prince’s works to be fair use (the remaining five were remanded to the district court on the issue). 2Cariou v. Prince, 714 F.3d 694, 706-07 (2nd Cir. 2013). In doing so, the Second Circuit disputed the above statement from the lower court, saying, “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative … Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so.”

The New York Times noted that the decision was criticized by copyright experts and photographers. I also criticized the decision, and later wrote that it ignored a long-standing principle that fair use requires that the use of the original work is essential to the new work for some purpose related to those listed in the statute (“criticism, comment, news reporting, teaching […], scholarship, [and] research”). 3See also William F. Patry & Shira Perlmutter, Fair Use Misconstrued: Profit, Presumptions, and Parody, 11 Cardozo Arts & Entertainment L. J. 667, 714-15 (1992) (“If the defendant is commenting on something that has nothing to do with the plaintiff’s work, he has no need to use the plaintiff’s work to make that comment. He can equally well create his own expression, or use material in the public domain. … In the absence of a need to use that particular work, there is inadequate justification for carving out a substantial chunk of the copyright owner’s exclusive rights.”). This necessity principle, I observed, can be derived from the underlying justifications of fair use—which include furthering the goals of copyright itself and providing First Amendment safeguards.

My discussion was motivated by the Seventh Circuit’s 2014 decision in Kienitz v. Sconnie Nation, which, after criticizing the Second Circuit’s holding in Cariou, touched briefly upon the necessity requirement. 4766 F.3d 756 (7th Cir. 2014). There, Judge Easterbrook said,

There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many non-copyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors.

Following the Supreme Court’s denial of cert in Sconnie Nation, it seemed like we’d be stuck with a bit of a circuit split between the Seventh Circuit and the Second (and Ninth) Circuit. Until Authors Guild.

Judge Leval, who authored the opinion, began his fair use analysis by exploring what it means to be “transformative” in the fair use context (a term he himself introduced into copyright jurisprudence). 5See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990). It “does not mean that any and all changes made to an author’s original text will necessarily support a finding of fair use.” To explain the distinction, Leval turned to the same passage from the Supreme Court’s opinion in Campbell v. Acuff-Rose that I relied on to describe the necessity requirement. There, the Court explained (as quoted by Leval),

[T]he heart of any parodist’s claim to quote from existing material . . . is the use of . . . a prior author’s composition to . . .comment[] on that author’s works. . . . If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish). . . . Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s . . . imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.

Leval drives this point home, saying,

In other words, the would-be fair user of another’s work must have justification for the taking. A secondary author is not necessarily at liberty to make wholesale takings of the original author’s expression merely because of how well the original author’s expression would convey the secondary author’s different message. Among the best recognized justifications for copying from another’s work is to provide comment on it or criticism of it. A taking from another author’s work for the purpose of making points that have no bearing on the original may well be fair use, but the taker would need to show a justification.

This would appear to contradict Cariou—there, Prince did not have any justification for using Cariou’s photos; indeed, he did not articulate any reason at all for using them, but the court nevertheless held that to be a fair use. I say appear to contradict since a panel court cannot overrule prior holdings by the same court, so we are left with a state of tension between the holdings in Cariou and Authors Guild.

Nevertheless, and setting aside other aspects of this decision, the Second Circuit’s recognition of the necessity requirement of fair use is a welcome one.

 

References   [ + ]

1. Cariou v. Prince, 784 F.Supp.2d 337 (SDNY 2011).
2. Cariou v. Prince, 714 F.3d 694, 706-07 (2nd Cir. 2013).
3. See also William F. Patry & Shira Perlmutter, Fair Use Misconstrued: Profit, Presumptions, and Parody, 11 Cardozo Arts & Entertainment L. J. 667, 714-15 (1992) (“If the defendant is commenting on something that has nothing to do with the plaintiff’s work, he has no need to use the plaintiff’s work to make that comment. He can equally well create his own expression, or use material in the public domain. … In the absence of a need to use that particular work, there is inadequate justification for carving out a substantial chunk of the copyright owner’s exclusive rights.”).
4. 766 F.3d 756 (7th Cir. 2014).
5. See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990).

Nearly four years ago, the US Justice Department indicted Kim Dotcom (née Kim Schmidt)—along with six other individuals and two corporations—on a number of charges related to the operation of Megaupload and alleged “massive worldwide online piracy.” 1Researchers found that “the shutdown of Megaupload and its associated sites caused digital revenues for three major motion picture studios to increase by 6.5-8.5%.”

Since then, Dotcom has consistently questioned the charges, claiming not innocence but a lack of legal basis for the charges themselves—that is, that his conduct in creating and operating Megaupload does not make him criminally liable for copyright infringement and related charges. His defense team even took the highly unusual step of publishing a “white paper” that explores its arguments against the criminal charges. 2I wrote previously about the arguments raised in the white paper here.

Despite this insistence of legality, Dotcom’s defense has repeatedly delayed an actual trial with procedural challenge after procedural challenge. This week, despite those efforts, his extradition hearing has begun and is expected to last four weeks.

But that still doesn’t mean Dotcom is confident his legal claims will hold up in court. In fact, his legal team has enlisted the aid of presidential candidate Lawrence Lessig to support their case. Lessig recently filed an expert opinion in the extradition hearing to support the argument “that the Superseding Indictment and Record of the Case filed by the DOJ do not meet the requirements necessary to support a prima facie case that would be recognized by United States federal law and subject to the US-NZ Extradition Treaty.”

There are a couple things worth highlighting about Lessig’s declaration.

Lessig, of course, has become a popular figure in the copyright world for his work in addressing how the law should work in a networked, digital world. However, his track record in accurately describing how the law actually works has been less than stellar.

This is not the first time he has appeared in litigation as an expert witness—he appeared in the godfather of online copyright cases, A&M Records v. Napster. In his expert declaration for Napster, Lessig argued in part that in evaluating whether the service enabled infringement, a court should look at whether it has “potential for substantial noninfringing purposes.” He concluded that Napster was capable of “vast” noninfringing uses, including “the sharing of non-copyrighted music, the sharing of copyrighted music that had been authorized for sharing (for example, for purposes of sampling), and the sharing of other non-copyrighted content on the net in a peer-to-peer manner.” Lessig added that, by passing the Audio Home Recording Act, Congress expressly left “private, noncommercial home recording unregulated by copyright law.”

None of these arguments were successful in the Ninth Circuit. 3A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001). The court did note it was bound by Sony‘s holding regarding substantial noninfringing purposes and would not “impute the requisite level of knowledge to Napster merely because peer-to-peer file sharing technology may be used to infringe plaintiffs’ copyrights” However, the court explained “Napster’s actual, specific knowledge of direct infringement renders Sony‘s holding of limited assistance to Napster. We are compelled to make a clear distinction between the architecture of the Napster system and Napster’s conduct in relation to the operational capacity of the system.”

The Ninth Circuit also rejected the argument that “that MP3 file exchange is the type of ‘noncommercial use’ protected from infringement actions by” the Audio Home Recording Act, holding that the plain language made the statute irrelevant to the issues at hand.

Lessig also spent a considerable amount of time and energy during the 2000s arguing that the Copyright Term Extension Act, as regarding the term extension of existing copyrights, violated the Copyright Clause of the Constitution. This litigation went all the way up to the Supreme Court, which rejected Lessig’s arguments unequivocally in Eldred v. Ashcroft. 4537 US 186 (2003). In doing so, the Court concluded its opinion by saying, “Beneath the facade of their inventive constitutional interpretation, petitioners forcefully urge that Congress pursued very bad policy in prescribing the CTEA’s long terms. The wisdom of Congress’ action, however, is not within our province to second-guess.”

Given this track record, it might be said that Dotcom is more interested in making a statement than beating the charges.

The second thing about Lessig’s declaration that jumps out is an apparent contradiction between Lessig and Dotcom’s defense team regarding the applicability of the DMCA safe harbors to Megaupload.

In the white paper, Dotcom’s defense team says

Even if the U.S. government’s wishful expansion of the criminal copyright law into the realm of secondary infringement were tenable (which it is not), Megaupload is shielded from criminal liability by specific “safe harbor” provisions in the Digital Millennium Copyright Act (DMCA), included in the law to protect companies like Megaupload that make efforts to remove infringing material in response to “take-down” notices issued by copyright holders

But in his declaration, Lessig asserts “The DMCA is only a defense in the civil context”. The reversal is notable.

I do think Lessig is correct here. As I wrote in 2012 following the indictment,

Though [the DMCA] references only “infringement of copyright” — which could include both criminal and civil infringement — it merely shields service providers from “liab[ility] for monetary relief, or [in some circumstances] injunctive or other equitable relief.” This is civil lawsuit language — criminal defendants are punished with fines, not liable for monetary relief.

In addition, criminal liability would seem to preclude safe harbor protection solely as a matter of common sense. Criminal copyright infringement requires willful infringement. The DMCA safe harbor only protects service providers from liability for passive infringement. If the evidence shows that a defendant was willfully infringing copyrighted works beyond a reasonable doubt, it doesn’t seem possible that that same defendant could ever meet the requirements for safe harbor protection under the statute.

Nevertheless, for Lessig to contradict a point the defense has been asserting for three years cannot be welcome news for Dotcom.

References   [ + ]

1. Researchers found that “the shutdown of Megaupload and its associated sites caused digital revenues for three major motion picture studios to increase by 6.5-8.5%.”
2. I wrote previously about the arguments raised in the white paper here.
3. A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).
4. 537 US 186 (2003).

The problem of online piracy remains acute, and enforcement is particularly challenging against for-profit operations which often operate anonymously and off-shore. 1See generally, Good Money Gone Bad, Digital Citizens Alliance (Feb. 2014). Even if a particular site can be successfully shut down, a new version can appear in a different location, sometimes within hours.

MovieTube is a particularly brazen example of such an operation. The MovieTube sites openly admit that “many movies we linked are pirated movies” but “Luckily we are not a US company so we do not need to respect US laws.” The operators exert full control over the sites—the complaint alleges, “All content streamed from the MovieTube Websites is selected, aggregated, organized, streamed and made available for viewing by the MovieTube Websites’ operators—Defendants—only.” Defendants market their sites heavily and profit off them through online advertising.

The major motion picture studios sued the MovieTube websites—consisting of a network of at least 29 different sites—on July 24, 2015 for direct and secondary copyright infringement, federal trademark infringement, and unfair competition and false designation of origin. The studios sought, among other remedies, injunctive relief against the MovieTube websites, as well as an order that “(i) registries and registrars disable the domains to the MovieTube Websites and (ii) third-party service providers cease providing services to the MovieTube Websites and Defendants in relation to the Infringing Copies.” Injunctive relief against third-party services that facilitate the operation of infringing sites gives effect to the legal judgment of the court while minimizing the “whac-a-mole” problem discussed above.

While this approach is relatively new in the context of online piracy, it is based on established and long-standing legal provisions and principles.

Active Concert or Participation

The Copyright Act provides copyright owners with a number of remedies they can seek against infringers, including common remedies such as damages and injunctions. Specifically, 17 USC § 502(a) provides that a court may “grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.”

Temporary injunctions—which includes both temporary restraining orders and preliminary injunctions in federal courts—are granted before judgment on the merits of a case, and their purpose is to preserve the status quo during litigation and prevent irreparable harm to a party’s rights before final judgment. 2Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F. 2d 1415, 1422 (9th Cir. 1984).

A court will grant a preliminary injunction if a plaintiff has demonstrated a likelihood of success on the merits, irreparable harm in the absence of an injunction, a balance of equities in her favor, and consistency with the public interest. 3Winter v. Natural Resources Defense Council, Inc., 129 S. Ct. 365, 374 (2008). Courts also require plaintiffs to post a bond when seeking a preliminary injunction. 4FRCP 65(c). The bond ensures that defendants are covered for any harm incurred in the event that an injunction is erroneously granted. 5Thomas Patterson, Litigation: The bond requirement for preliminary injunctions, Inside Counsel, September 5, 2013.

Under the Federal Rules of Civil Procedure, an injunction binds “(A) the parties; (B) the parties’ officers, agents, servants, employees, and attorneys; and (C) other persons who are in active concert or participation with anyone described in … [](A) or (B).” The Supreme Court has explained that this rule (present in substantially the same form since the Rules were first promulgated in 1938) “is derived from the common-law doctrine that a decree of injunction not only binds the parties defendant but also those identified with them in interest, in ‘privity’ with them, represented by them or subject to their control. In essence it is that defendants may not nullify a decree by carrying out prohibited acts through aiders and abettors, although they were not parties to the original proceeding.” 6Regal Knitwear Co. v. NLRB, 324 US 9, 14 (1945).

In recent years, a number of companies have relied on serving injunctions on aiders and abettors of infringing sites given the difficulty of hailing the operators of such sites into court and the ease with which they can evade judgment. The practice has become routine for sites involving counterfeit goods and trademark infringement. 7See, e.g., Belstaff Group SA v. Doe, Temporary Restraining Order No. 15-cv-2242 (S.D.N.Y. Apr. 8, 2015); Richemont Int’l SA v. Xiao, Temporary Restraining Order, No. 13-cv-9071 (S.D.N.Y. Dec. 23, 2013); Tory Burch LLC v. Doe, No. 12 C 7163 (N.D. Ill. Oct. 2, 2012); Richemont Int’l SA v. Chen, Temporary Restraining Order, No. 12-cv-6689 (S.D.N.Y. Sept. 4, 2012); Burberry v. Doe, No. 12 Civ. 0479 (TPG) (S.D.N.Y. May 15, 2012); Hermès v. Doe, No. 12 Civ. 1623 (DLC) (S.D.N.Y. Apr. 30, 2012); The North Face Apparel Corp. v. Fujian Sharing Imp. & Exp. Ltd. Co., No. 10 Civ. 1640 (AKH) (SDNY June 24, 2011); The Nat’l Football League v. Chen, Temporary Restraining Order, No. 11-Civ-0344 (WHP) (S.D.N.Y. Jan. 19, 2011). More recently, courts have granted similar injunctions in cases involving copyright infringement. For example, in May, ABS-CBN, a media and entertainment company in the Philippines, sued a network of pirate sites that were alleged to provide unauthorized, on-demand streaming of its television shows and films. The court granted an injunction against the sites, and ordered domain name registrars used by the sites to transfer registration to ABS-CBN and privacy protection services used by the sites to disclose the identity of the defendants. Similar injunctions have been granted on a number of other occasions. 8Arista Records, LLC v. Tkach, Memorandum & Order, 15-CV-3701 (SDNY June 3, 2015); Showtime Networks, Inc. v. Doe 1, Temporary Restraining Order and Order to Show Cause, No. 15-CV-3147 (CD Cal. April 30, 2015); Warner Bros. Ent., Inc., v. Doe, Preliminary Injunction Order, No. 14-CV-3492 (SDNY May 29, 2014); AACS-LA v. Shen, Order, No. 14-CV-1112 (SDNY Mar. 4, 2014).

Active concert or participation is a fact-specific inquiry. “In order to show that a non-party ‘aided and abetted’ a party subject to the decree,” say courts, “the plaintiff must show that the non-party had actual knowledge of the judicial decree and violated it, and that the challenged action was taken for the benefit of, or to assist, a party subject to the decree.” 9Adcor Indus., Inc. v. BEVCORP, LLC, 411 F. Supp. 2d 778, 796 (ND Ohio 2005).

Upon notice of an injunction, a non-party can challenge the order in court. A non-party who does not comply with an injunction after having been served notice can be the subject of a contempt proceeding. Here, the non-party can also raise the argument that it is not in active concert or participation with the defendant.

CloudFlare and Grooveshark

One can see this process in action in recent litigation involving Grooveshark and CloudFlare. 10Arista Records, LLC v Vita Tkach, Memorandum & Order, 15-CV-3701 (SDNY June 3, 2015).

Following a finding that music streaming site Grooveshark was liable for copyright infringement, and a permanent injunction against the site’s operators, a “copycat” version of Grooveshark appeared online. The plaintiff record labels immediately sought a temporary restraining order against the operators of the copycat and “any persons acting in concert or participation with them or third parties providing services used in connection with Defendants’ operations.” The plaintiffs served notice of the TRO on Namecheap, a domain name registrar that defendants registered their domains with. Namecheap complied with the order, and defendants subsequently registered new domain names through a new registrar, Dynadot. Dynadot complied with the order after it was served notice. Defendants then registered another domain name with a registrar in Switzerland. Plaintiffs consequently turned their attention to CloudFlare, “an internet service provider that provides authoritative domain name system servers for its customers as a means of providing content delivery network and reverse-proxy services.” CloudFlare’s services had been used by each of the copycat domain names discussed above.

Plaintiffs then requested a court order requiring CloudFlare to comply with the TRO. Cloudflare argued that it is not in active concert or participation with the defendants and “should not be bound by the injunction because its service is ‘passive’ and not necessary for the operation of the Grooveshark sites.” The court rejected both of CloudFlare’s arguments. Cloudflare had knowledge of the TRO and subsequently permitted its services to be used for one of the copycat domain names. This conduct, said the court, “benefits Defendants and quite fundamentally assists them in violating the injunction because, without it, users would not be able to connect to Defendants’ site unless they knew the specific IP address for the site.” The court also said that it is not required to show that CloudFlare is necessary for the operation of Defendants’ site, only that it is in active concert or participation with Defendants.

Due Process

Civil litigation, of course, accords full due process to parties. But it’s important to note that binding nonparties to injunctions, as described above, is also fully consonant with due process. As the First Circuit has explained:

[T]he adjudicative framework surrounding contempt proceedings fully protects nonparties’ constitutional rights. If contempt proceedings are in fact undertaken, the forum court will resolve the fact-specific question of whether the cited nonparty was in active concert or participation with the named defendant. If so, the named defendant will be deemed the nonparty’s agent, and the nonparty’s right to due process will have been satisfied vicariously. If, however, the party prosecuting the contempt proceeding fails to show active concert or participation, a finding of contempt will not lie.

We explain briefly why, in either of these events, due process is not at risk. Contempt proceedings operate to ensure that nonparties have had their day in court. In order to hold a nonparty in contempt, a court first must determine that she was in active concert or participation with the party specifically enjoined (typically, the named defendant). This means, of course, that the nonparty must be legally identified with that defendant, or, at least, deemed to have aided and abetted that defendant in the enjoined conduct. The existence of such a linkage makes it fair to bind the nonparty, even if she has not had a separate opportunity to contest the original injunction, because her close alliance with the enjoined defendant adequately assures that her interests were sufficiently represented.

The coin, however, has a flip side. A nonparty who has acted independently of the enjoined defendant will not be bound by the injunction, and, if she has had no opportunity to contest its validity, cannot be found in contempt without a separate adjudication. This tried and true dichotomy safeguards the rights of those who truly are strangers to an injunctive decree. It does not offend due process. 11Microsystems Software v. Scandinavia Online AB, 226 F. 3d 35, 42-43 (1st Cir. 2000).

In short, the process involves a court determining that the defendant in question is likely infringing copyright after hearing from both parties. If so, it may grant a preliminary injunction. The plaintiff serves notice of the injunction on a service provider, which requires them to stop facilitating the conduct of a party that a court has determined breaks the law (and in most instances violates the service provider’s own terms of service). A service provider who receives notice can challenge the order in court.

The court has ordered defendants here to show cause why a preliminary injunction should not issue by tomorrow, August 7.

References   [ + ]

1. See generally, Good Money Gone Bad, Digital Citizens Alliance (Feb. 2014).
2. Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F. 2d 1415, 1422 (9th Cir. 1984).
3. Winter v. Natural Resources Defense Council, Inc., 129 S. Ct. 365, 374 (2008).
4. FRCP 65(c).
5. Thomas Patterson, Litigation: The bond requirement for preliminary injunctions, Inside Counsel, September 5, 2013.
6. Regal Knitwear Co. v. NLRB, 324 US 9, 14 (1945).
7. See, e.g., Belstaff Group SA v. Doe, Temporary Restraining Order No. 15-cv-2242 (S.D.N.Y. Apr. 8, 2015); Richemont Int’l SA v. Xiao, Temporary Restraining Order, No. 13-cv-9071 (S.D.N.Y. Dec. 23, 2013); Tory Burch LLC v. Doe, No. 12 C 7163 (N.D. Ill. Oct. 2, 2012); Richemont Int’l SA v. Chen, Temporary Restraining Order, No. 12-cv-6689 (S.D.N.Y. Sept. 4, 2012); Burberry v. Doe, No. 12 Civ. 0479 (TPG) (S.D.N.Y. May 15, 2012); Hermès v. Doe, No. 12 Civ. 1623 (DLC) (S.D.N.Y. Apr. 30, 2012); The North Face Apparel Corp. v. Fujian Sharing Imp. & Exp. Ltd. Co., No. 10 Civ. 1640 (AKH) (SDNY June 24, 2011); The Nat’l Football League v. Chen, Temporary Restraining Order, No. 11-Civ-0344 (WHP) (S.D.N.Y. Jan. 19, 2011).
8. Arista Records, LLC v. Tkach, Memorandum & Order, 15-CV-3701 (SDNY June 3, 2015); Showtime Networks, Inc. v. Doe 1, Temporary Restraining Order and Order to Show Cause, No. 15-CV-3147 (CD Cal. April 30, 2015); Warner Bros. Ent., Inc., v. Doe, Preliminary Injunction Order, No. 14-CV-3492 (SDNY May 29, 2014); AACS-LA v. Shen, Order, No. 14-CV-1112 (SDNY Mar. 4, 2014).
9. Adcor Indus., Inc. v. BEVCORP, LLC, 411 F. Supp. 2d 778, 796 (ND Ohio 2005).
10. Arista Records, LLC v Vita Tkach, Memorandum & Order, 15-CV-3701 (SDNY June 3, 2015).
11. Microsystems Software v. Scandinavia Online AB, 226 F. 3d 35, 42-43 (1st Cir. 2000).

The Ninth Circuit’s en banc decision in Garcia v. Google was hugely popular when it came out several weeks ago, though talk about it has quickly died down. 1No. 12-57302, May 18, 2015. Despite that, part of the court’s discussion is troubling and worth note.

To recount the facts quickly, actress Cindy Lee Garcia performed a cameo in what she thought was an “action-adventure thriller set in ancient Arabia.” The film ended up being an offensive anti-Islam film Innocence of Muslims. Garcia appeared for five seconds with a dubbed-over voice asking, “Is your Mohammed a child molester?” A 14 minute version of the film was uploaded to YouTube, causing widespread outrage in the Middle East. A fatwa was issued by an Egyptian cleric against all participants in the film, and Garcia received “multiple death threats” because of her appearance. 2See Cindy Lee Garcia’s declaration for a detailed account of many of these threats.

Garcia took legal action through a number of avenues. On November 30, 2012, a federal district court denied a preliminary injunction based on a copyright claim. A Ninth Circuit panel reversed this decision in 2014 and granted the injunction, causing widespread outrage on the internet. 3766 F.3d 929 (9th Cir. 2014). On May 18th, however, an en banc court dissolved the panel’s injunction and affirmed the district court’s decision.

The En Banc Decision

When deciding whether to grant a preliminary injunction, a court considers four factors: (1) the likelihood a plaintiff will succeed on the merits of her claim, (2) the likelihood a plaintiff will suffer irreparable harm absent an injunction, (3) the balance of hardships between the two parties, and (4) the public interest.

The Ninth Circuit held that the district court did not abuse its discretion in denying the injunction for two reasons. First, it concluded that Garcia was unlikely to succeed on the merits, saying “neither the Copyright Act nor the Copyright Office’s interpretation supports Garcia’s claim.” And second, it held that “Garcia failed to muster a clear showing of irreparable harm.” Because of these two conclusions, the court found it unnecessary to consider the final two factors.

I think the Ninth Circuit reached the correct result on the merits in holding that Garcia did not have an independent copyrightable interest in her five second performance—and there are doctrines the court didn’t look at, such as the de minimis doctrine, that may have separately provided grounds for such a result. However, its discussion regarding irreparable harm does not rest on as solid legal grounds. It’s easy to gloss over the discussion of irreparable harm if one is thinking about it in terms of Garcia’s weak claim. But when one realizes it applies across the board to all copyright owners, then the concern becomes apparent.

The Ninth Circuit starts its discussion of irreparable harm by asserting that “there is a mismatch between [Garcia’s] substantive copyright claim and the dangers she hopes to remedy through an injunction.” That is, says the court, because Garcia is seeking an injunction under copyright law, her “harm must stem from copyright—namely, harm to her legal interests as an author.” The Ninth Circuit cites to the Second Circuit’s remark in Salinger v. Colting that “The relevant harm is the harm that … occurs to the parties’ legal interests” 4607 F.3d 68, 81 & n.9 (2d Cir. 2010). in support.

It then turns immediately to the Constitution, asserting that the “purpose of copyright underscores the disjunction Garcia’s case presents.” The Ninth Circuit finds copyright’s purpose is explicitly commercial and not to “protect secrecy.”

Having defined copyright’s purpose in such a way, the court then describes the harms Garcia is seeking to prevent as “damage to her reputation, unfair[,] forced promotion of a hateful Film, and death.” However, it says, these “harms are untethered from—and incompatible with—copyright and copyright’s function as the engine of expression.”

For example, the court finds “privacy is not a function of the copyright law” because the goal of copyright is “to encourage public access to the creative work of the author.” Similarly, emotional distress damages are unavailable under the Copyright Act “because such damages are unrelated to the value and marketability of their works.”

Finally, the court finds no refuge for Garcia in the “right to be forgotten” or “moral rights”, since it says neither are recognized in the United States. It ultimately concludes that “the gravamen of Garcia’s harm is untethered from her commercial interests as a performer, and instead focuses on the personal pain caused by her association with the film.”

The Legal Interests of an Author

The court gets so much incorrect in so little time. Perhaps it’s the case that the weakness of Garcia’s substantive claim casts a shade over the court’s discussion of irreparable harm. The problem is that this discussion is just as applicable to a meritorious copyright claim.

So what went wrong?

First, the court improperly narrows the interest at stake from the legal interest to the “legal interest as an author” (and, later, narrows this further to the commercial interest as a performer). There is no statutory basis for this interpretation. Copyright protection subsists in a work. 517 USC 102(a). It accords a set of exclusive rights in that work. 617 USC 106. Infringement occurs simply through violation of any of these exclusive rights. 717 USC 501. Nowhere does the Copyright Act qualify infringement or an author’s exclusive rights as the Ninth Circuit has.

Ironically, the very case the court cites in support provides a counterargument. After the Second Circuit says in Salinger that the relevant harm is the one that “occurs to the parties’ legal interests”, as the Ninth Circuit quotes, it goes on to say that “The plaintiff’s interest is, principally, a property interest in the copyrighted material.” An invasion of a property interest causes a legal harm. This is contrary to the Ninth Circuit’s suggestion here that only certain types of invasions cause legal harms which may give rise to irreparable harm, particularly only harms to commercial interests.

The Supreme Court has provided support for this interpretation a number of times over the decades. In eBay v. MercExchangewhich, though it involved an injunction for patent infringement, is just as applicable to copyright injunctions— 8The Ninth Circuit is among the Federal Circuit Courts of Appeal to explicitly hold so, see Perfect 10 Inc. v. Google Inc., 653 F. 3d 976, 980 (9th Cir. 2011). the Court said that “a copyright holder possesses ‘the right to exclude others from using his property.’” 9547 US 388, 392 (2006). It cautioned against adopting “expansive principles suggesting that injunctive relief could not issue in a broad swath of cases.” Of particular relevance here, it chastised the lower court’s conclusion that “’[a plaintiff’s] lack of commercial activity in practicing the patents’ would be sufficient to establish that the patent holder would not suffer irreparable harm if an injunction did not issue.”

As the Court said in Sony, “It is not the role of the courts to tell copyright holders the best way for them to exploit their copyrights.” 10Sony Corp v Universal City Studios, 464 US 417, 450 (1984). But it was most direct in Fox Film Corp. v. Doyal when it said, “The owner of the copyright, if he pleases, may refrain from vending or licensing and content himself with simply exercising the right to exclude others from using his property.” 11286 US 123, 127 (1932).

Elsewhere, the Ninth Circuit has said, “Even an author who had disavowed any intention to publish his work during his lifetime was entitled to protection of his copyright”. 12Worldwide Church of God v. Philadelphia Church of God, 227 F. 3d 1110, 1119 (9th Cir. 2000).

The legal interest in a copyright, based on the statutory text and Supreme Court precedent, is an interest in exercising exclusively the rights enumerated in the Copyright Act. It is not, as the Ninth Circuit suggests, limited to a narrow subset of invasions, such as those that only affect a copyright owner’s commercial interests. That’s not to say that there is a presumption of irreparable harm once a likelihood of infringement has been established; the Supreme Court cautioned against such “categorical rules” in eBay. 13547 US at 392. See also Salinger v. Colting, 607 F. 3d 68 at 82 (2nd Cir. 2010) (“After eBay, however, courts must not simply presume irreparable harm.”). But as the Second Circuit pointed out when applying eBay, “This is not to say that most copyright plaintiffs who have shown a likelihood of success on the merits would not be irreparably harmed absent preliminary injunctive relief. As an empirical matter, that may well be the case, and the historical tendency to issue preliminary injunctions readily in copyright cases may reflect just that.” 14607 F. 3d at 82.

Garcia, however, did not argue for a presumption of irreparable harm. She asserted a number of irreparable harms that were likely to result in the absence of an injunction. 15Ex parte application for a temporary restraining order and an order to show cause re preliminary injunction, and order of impoundment, No. CV 12-8315 (Oct. 17, 2012) (No. 12). These harms included the risk of death, that most irreparable of injuries.

Non-economic Interests

The Ninth Circuit marshals a number of points to support its conclusion that Garcia failed to show irreparable harm. First, the court’s discussion of the Constitutional purpose of copyright is both premature and misconceived.

Its emphasis on copyright’s role in encouraging “public access to the creative work of the author” and its ability to override a copyright owner’s legal interest leads to a logical contradiction. In a sense, the court is suggesting that copyright’s purpose is served by ignoring copyright. One must instead read the Copyright Clause conjunctively: Congress “promote[s] the progress of science and useful arts by securing… to authors… the exclusive right to their… writings.” Copyright’s purpose, in other words, is served when authors’ exclusive rights are secured.

The court then asserts that relief from the injuries Garcia seeks to avoid—”damage to her reputation, unfair[,] forced promotion of a hateful Film, and death”—”is not easily achieved under copyright law” because those harms are incompatible with “copyright’s function as the engine of free expression.”

This is an incomplete statement about the relationship between copyright and the First Amendment. The First Amendment protects not only the freedom to speak, but the freedom not to speak. 16Hurley v. Irish-American Gay, Lesbian, & Bisexual Group of Boston , 515 U.S. 557 (1995). at 573; see also, e.g., Pac. Gas & Elec. Co. v. Pub. Util. Comm’n of Cal., 475 U.S. 1 (1986) (plurality opinion). Courts—including the Supreme Court—have recognized this principle applies equally in copyright cases. The Court in Harper & Row said that “freedom of thought and expression ‘includes both the right to speak freely and the right to refrain from speaking at all.’” 17471 US 539, 559 (1985). Copyright, it said, serves this “First Amendment value.” Indeed, the Second Circuit observed in Salinger, which the Ninth Circuit quotes in its discussion, that “[t]he loss of First Amendment freedoms,” and hence infringement of the right not to speak, “for even minimal periods of time, unquestionably constitutes irreparable injury.” 18Salinger at 81. It would certainly be the case, then, that being threatened with death for words that one did not speak but that have been attributed to her would constitute irreparable injury.

The court is correct when it says that “authors cannot seek emotional distress damages under the Copyright Act.” But the case it cites is speaking about actual damages, not injunctive relief, so that statement is irrelevant here.

The court’s dismissal of a copyright owner’s privacy interests is similarly misguided. Copyright and privacy have long shared common ground. In 1849, a British court said, “That there is property in the ideas which pass in a man’s mind is consistent with all the authorities in English law. Incidental to that right is the right of deciding when and how they shall first be made known to the public. Privacy is a part, and an essential part, of this species of property.” 19Prince Albert v. Strange, 1 McN. & G. (1849). Warren and Brandeis’ seminal article, The Right to Privacy, also observe this kinship. There, the legal giants say, “[T]he legal doctrines relating to infractions of what is ordinarily termed the common-law right to intellectual and artistic property are, it is believed, but instances and applications of a general right to privacy.” 204 Harv. L. Rev. 193 (1890).

Right Results, Wrong Approach

To reiterate, establishing irreparable harm here does not necessarily mean Garcia should get an injunction. As noted above, the weak merits of the copyright claim weighs against an injunction. And though the Ninth Circuit did not look at the third factor, the balance of hardships or equities, that likely weighs against injunctive relief as well, given Google’s attenuated participation in the infringement.

So it is all the more unfortunate that the court expounded erroneously on irreparable harm. At its heart, copyright provides the author with the exclusive right to decide how, when, and where their expression is disseminated to the public (subject, of course, to exceptions and limitations like fair use). Any given author will have a range of equally valid interests motivating those decisions, both economic and non-economic. Courts should exercise caution in second guessing those motivations as the Ninth Circuit did here in its discussion on irreparable harm.

References   [ + ]

1. No. 12-57302, May 18, 2015.
2. See Cindy Lee Garcia’s declaration for a detailed account of many of these threats.
3. 766 F.3d 929 (9th Cir. 2014).
4. 607 F.3d 68, 81 & n.9 (2d Cir. 2010).
5. 17 USC 102(a).
6. 17 USC 106.
7. 17 USC 501.
8. The Ninth Circuit is among the Federal Circuit Courts of Appeal to explicitly hold so, see Perfect 10 Inc. v. Google Inc., 653 F. 3d 976, 980 (9th Cir. 2011).
9. 547 US 388, 392 (2006).
10. Sony Corp v Universal City Studios, 464 US 417, 450 (1984).
11. 286 US 123, 127 (1932).
12. Worldwide Church of God v. Philadelphia Church of God, 227 F. 3d 1110, 1119 (9th Cir. 2000).
13. 547 US at 392. See also Salinger v. Colting, 607 F. 3d 68 at 82 (2nd Cir. 2010) (“After eBay, however, courts must not simply presume irreparable harm.”).
14. 607 F. 3d at 82.
15. Ex parte application for a temporary restraining order and an order to show cause re preliminary injunction, and order of impoundment, No. CV 12-8315 (Oct. 17, 2012) (No. 12).
16. Hurley v. Irish-American Gay, Lesbian, & Bisexual Group of Boston , 515 U.S. 557 (1995). at 573; see also, e.g., Pac. Gas & Elec. Co. v. Pub. Util. Comm’n of Cal., 475 U.S. 1 (1986) (plurality opinion).
17. 471 US 539, 559 (1985).
18. Salinger at 81.
19. Prince Albert v. Strange, 1 McN. & G. (1849).
20. 4 Harv. L. Rev. 193 (1890).

Last fall, a federal judge in the Southern District Court of New York ruled that a news monitoring service’s copying of a news channel’s “broadcast content for indexing and clipping services to its subscribers constitutes fair use.” 1Fox News Network, LLC v. TVEyes, Inc., 43 F. Supp. 3d 379 (SDNY 2014); see also my post, Fox News v TVEyes: Fair Use Transformed. The service, TVEyes, copied wholesale every program broadcast by 1,400 channels (including plaintiff Fox News Network). It then created a searchable index of video clips and provided its clients—who pay $500 a month for the service—streaming and downloading access to that content, all without a license from the channels.

Fox News sued for copyright infringement. Currently, the court is considering whether other features offered by TVEyes also constitute fair use: saving, archiving, downloading, emailing, and sharing clips by subscribers, along with searching television clips by date and time rather then keyword or term. Fox is supported by an amicus brief from Bright House, CNN, CBS, NBC Universal, and News 12, while the EFF and the Technology Law & Policy Clinic at NYU School of Law have filed in support of TVEyes.

Though this litigation is recent, the issues involved here concerning fair use and news monitoring are not new. In fact, Congress looked at them in great detail over twenty years ago.

News monitoring and Section 107

Sen. Orrin Hatch introduced a bill October 1990 that would have amended the Copyright Act to provide that “fair use of a copyrighted work for purposes of monitoring news reporting programming is not an infringement of copyright.” 2S.3229, 101st Cong. (2nd Sess. 1990). The bill did not make it out of Committee.

During a 1991 hearing before the House IP Subcommittee, Robert Waggoner, Chairman of the Video Monitoring Services of America, testified on behalf of the International Association of Broadcast Monitors. 3Copyright Amendments Act of 1991 Hearings before the H. Subcomm. on Intellectual Property and Judicial Administration of the Comm. on the Judiciary on H.R. 2372, 101st Cong. (1991). Waggoner officially appeared in support of Title I of H.R. 2372, the bill being considered by the Subcommittee, but spoke primarily about fair use for broadcast monitoring services, an issue not on the agenda.

Waggoner positioned broadcast news monitoring services as advancing “a core First Amendment interest.”

They disseminate news to an interested public that would otherwise have no effective means of access to such information. They are the custodians of the public’s right to know what is being aired about them, and where.

However, Waggoner raised concerns over the Eleventh Circuit’s 1984 decision in Pacific Southern Co. v. Duncan, which rejected a broadcast news monitor’s fair use defense, primarily because the service was commercial in nature. 4744 F.2d 1490 (11th Cir. 1984), cert. denied, 471 U.S. 1004 (1985). He also cited with concern a number of lower courts that have followed Duncan. 5E.g., Cable News Network, Inc. v. Video Monitoring Services of America, Inc., Civ. No. 1:88-CV-2660-JOF (N.D. Ga. Jan. 9, 1990); NBC Subsidiary (KCNC-TV) v. Video Monitoring Services of America, Inc., Civ. No. 88-Z-234 (D. Colo. July 27, 1989); Georgia Television Co. v. TV News Clips of Atlanta, Inc., 9 U.S.P.Q. 2d (BNA) 2049 (N.D. Ga. 1989).

S. 1805

Senator Hatch introduced his news monitoring bill again a few months following this hearing. 6S. 1805, 102nd Cong. (1st Sess. 1991). Like the previous bill, it would amend §107 of Title 17 by inserting “or monitoring news reporting programming” after “news reporting”. This time, the bill was referred to the Senate Subcommittee on Patents, Copyrights and Trademarks, which held a hearing on the legislation June 16, 1992. 7News monitoring: Hearing before the S. Subcomm. on Patents, Copyrights, and Trademarks of the Committee on the Judiciary on S. 1805, a bill to amend Title 17, United States Code, to clarify news reporting monitoring as a fair use exception to the exclusive rights of a copyright owner, 102nd Cong. (1992), hereinafter “News monitoring hearing”.

The Senate Subcommittee heard from six witnesses, including Register of Copyrights Ralph Oman and noted copyright scholars David Nimmer (appearing on behalf of Turner Broadcasting System and the National Association of Broadcasters) and L. Ray Patterson (who had represented the news clipping service in Duncan). Arizona Senator and Subcommittee Chairman Dennis DeConcini began with a brief statement extolling the benefits of news monitoring services but skeptical that the bill was necessary:

We live in an age where the electronic media provide nonstop access to a constant flow of information and take us around the world as quickly as it takes us down the street. In a constant sea of electronic information, it’s difficult, if not impossible, to stay on top of all that the news has to offer. Therefore, I find these new monitoring services to be extremely valuable. However, I do not believe that the value of these services is the question before us today. To me the question is how these services go about getting access to the information that they monitor, package, and eventually sell.

The fair-use doctrine has evolved over years through the courts as a balancing test that I believe has served us well and one which I’m reluctant to amend in the absence of compelling evidence. I will listen with great interest to the justification for the legislation, and I’ll look for an answer as to why this conflict cannot be resolved in the marketplace.

Register Oman led off the witness slate by testifying that “the Copyright Office does not support enactment of S. 1805.” In the Office’s view, fair use and licensing arrangements would cover most current broadcast monitoring activities, the bill would not provide any additional certainty to providers, and in some cases it goes too far in departing from fair use precedent, particularly by providing commercial access beyond “hard news.” Said Oman, “Monitors would be free to reproduce segments of documentaries, of magazine format-type shows, and public affairs broadcasting.”

Oman also raised concerns about market harm, saying “Broadcast monitoring threatens copyright owners’ potential market for video clips, to some extent, whether or not they now exploit the market, and I understand that some of them already do provide a limited service in this regard.”

Robert Cohen, president of Video Monitoring Services of America, testified next on behalf of the International Association of Broadcast Monitors. He began with a dire warning. “Without this legislation, the existence of the broadcast news monitoring industry in the United States is and will remain in jeopardy. Without our industry, the ability of the public to have access to news reporting about themselves and about issues important to them will be threatened.”

Cohen reiterated that the motivation for the bill were the previously mentioned court decisions like Duncan that have held broadcast monitoring was not fair use. He emphasized the important service that monitors provide to their clients, and he supported the bill in order to “clarify to the judiciary that news monitoring is just the kind of activity that the fair-use doctrine was designed to protect.” Cohen concluded his remarks by stressing “that if we go out of business or our services are chilled, there is no alternative for obtaining information from news programming on an immediate, nationwide basis.” 8International Association of Broadcast Monitors President Ed Moser separately testified during this hearing, but his statement largely echoed Cohen’s points. L. Ray Patterson concurred with Cohen. In his opinion, Duncan was wrongly decided, and this bill was necessary “to clarify [the law] for the courts.” 9Patterson’s argument that it was wrongly decided was that the Eleventh Circuit’s permanent injunction “gave perpetual copyright protection, unlimited in nature, to protect uncopyrightable as well as abandoned material, and this is wholly contra to what the 1976 Copyright Act provides.” This appears to erroneously conflate right with remedy.

David Nimmer offered a succinct description of the broadcasters’ position in his written statement:

We recognize this subcommittee’s interest in exploring ways in which copyright laws can promote public access to information and facilitate rapidly developing communications technologies. Broadcast monitoring services… are but one means of fulfilling this valuable public service. At the same time, however, public access to news broadcasting need not be secured at the expense of copyright ownership.

Neither broadcast monitoring services, nor the public interest in public access to video monitored news, should trump the copyright claims of those who finance, produce, create and edit broadcast news. Copyright protection, not copyright violation, serves the public interest. Copyright protection is intended to encourage creation of intellectual property by allowing the creator to retain the maximum ability to profit from his or her work. The control of a work’s ancillary uses is an important part of deriving full value. For this reason, we are troubled by the rhetoric of those video monitors who refuse to enter into license with the originators of the programs that they copy and sell, but still try to justify their behavior under the cloak of the “public interest”. For example, one witness who testified before Congress on behalf of the broadcast monitoring industry equates the guarantees of free speech with an unimpeded—i.e., unlicensed—right of public access to information.

This tips the balance too far. The simple truth is that this is a business issue, not a constitutional issue. We are not disagreeing about whether the public should have access to news clips but about whether copyright holders deserve compensation for and protection of their product.

Nimmer went on to rebut some of the concerns raised by proponents of the bill.

First, he noted that Congress has already addressed the question of public access to news broadcasts in multiple areas of federal law. For example, the 1976 Act permits archival reproduction and distribution by libraries and archives of “an audiovisual work dealing with news”; outside the Copyright Act, the Library of Congress is permitted to reproduce and distribute a “regularly scheduled newscast or on-the-spot coverage of news media.”

He then considered current business practices, saying, “Far from demonstrating a breakdown in the marketplace for access to news programs, current licensing practices can accommodate the growth of the video monitoring industry through market-based incentives.” Among the benefits of voluntary licensing is that it “forces direct face-to-face negotiations between news producers and video monitors, sensitizing each group to the needs of the others.”

Nimmer concluded,

Information access and retrieval technology is undergoing daily, rapid change. Rather than craft legislation that [may] chill development of new technologies (e.g., interactive, on-line video retrieval), Congress should ensure that existing non-profit, non-commercial uses remain anchored within the fair use exception and that commercial businesses built around the use of materials originated by others continue to be governed by traditional copyright law norms.

Senator Hatch wrapped up the hearing with a statement supporting his bill. Like Cohen and Patterson, he believed most news monitoring should fall under fair use, but court decisions like Duncan have necessitated a legislative course correction.

There was no further action on S.1805 following the hearing. Sen. Hatch reintroduced the bill the following Congressional session but it did not go anywhere, 10S. 23, 103rd Congress, 1st Sess. (1993). and there have been no similar bills introduced since. Congress had ample opportunity to consider adding news reporting monitoring to the list of fair use purposes in 107 but declined to do so.

Then and now

Contrary to Cohen’s predictions, the lack of legislation did not jeopardize the broadcast news monitoring industry. Nevertheless, little has changed in the discussion of fair use and news monitoring from the early 90s to the current litigation involving Fox News and TVEyes. For example, like Senator DeConcini, the amicus brief from the EFF and the NYU Tech Law & Policy Clinic says, “Every day, a virtual flood of news content streams across countless front pages and home pages, broadcast-television and social-media feeds, and more. The amount of content being produced in the media environment has exploded in recent years.”

But some things have changed. Most importantly, the current litigation involving TVEyes presents several crucial facts that are fundamentally different from the context in which proponents of the news monitoring bills in the 1990s supported legislation.

First, Waggoner noted in his 1991 testimony that, at the time, broadcast monitors only recorded news programs and only provided small clips. 11News monitoring hearing at 265-266. “Hard news”, being primarily informational rather than creative, arguably admits to fair use more readily. TVEyes records everything on 1,400 channels: news programs, news magazines, documentaries, and likely everything else. And users can watch at least some of these in their entirety. 12See Expert Report and Declaration of Beth Knobel, Ph.D. at 4-5, Fox News Network, LLC, v. TVEyes, Inc., No. 1:13-CV-05315 (SDNY 2015) (No. 100), hereinafter “Knobel declaration” (“it was easy for me to download an entire episode of NBC Nightly News with Brian Williams without commercials from TVEyes in five high definition video clips”).

Second, at the time, broadcast monitors voluntarily restricted against redistribution and rebroadcast of clips by clients. 13News monitoring hearing at 29. TVEyes, however, allegedly encourages customers to post, redistribute, and email content. 14See Knobel declaration at 26, “the TVEyes Content-Delivery Features are designed to encourage users to download and publicly distribute video clips. TVEyes also touts the ability to use these features for those purposes in its marketing materials and in communications with its clients.”

Finally, there has been a marked shift in technology and the television news market. In the 1990s, as Waggoner observed,

[B]roadcasters themselves do not currently service or exploit the demand for monitored, after-broadcast news programming. They have not demonstrated any interest in doing so. Most broadcasters make previously-aired programming available to the public on a casual or delayed basis, if at all. The public’s interest in having consistent, complete and immediate access to broadcast news programming is not now well served by broadcasters. 15News monitoring hearing at 264.

That is no longer the case. Viewers are increasingly watching shorter video clips online rather than linear television. 16See, e.g., Lara O’Reilly, Most Young People Say They Have Stopped Watching TV, Business Insider (Jan. 26, 2015). As Knobel points out, “the television news business has invested significant resources to make content available through digital distribution and has developed established markets to support such distribution, including website and mobile-device-based advertising, extensions of cable or satellite subscriptions (e.g., TVEverywhere), and clip licensing.” 17Knobel declaration at 4. Thus, services like TVEyes have a more direct impact on the market for broadcasters nowadays. Their reproduction and distribution of clips means they “stand[] to profit from exploitation of the copyrighted material without paying the customary price,” a factor “that tends to weigh against a finding of fair use.” 18See, Harper & Row Publishers, Inc. v. Nation Enterprises, 471 US 539, 562 (1985) (“The fact that a publication was commercial as opposed to nonprofit is a separate factor that tends to weigh against a finding of fair use… The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.”). Fair use was intended to be a flexible doctrine, so it should be able to account for such shifts in the market.

Oral arguments on the current motions are scheduled for July 9.

References   [ + ]

1. Fox News Network, LLC v. TVEyes, Inc., 43 F. Supp. 3d 379 (SDNY 2014); see also my post, Fox News v TVEyes: Fair Use Transformed.
2. S.3229, 101st Cong. (2nd Sess. 1990).
3. Copyright Amendments Act of 1991 Hearings before the H. Subcomm. on Intellectual Property and Judicial Administration of the Comm. on the Judiciary on H.R. 2372, 101st Cong. (1991).
4. 744 F.2d 1490 (11th Cir. 1984), cert. denied, 471 U.S. 1004 (1985).
5. E.g., Cable News Network, Inc. v. Video Monitoring Services of America, Inc., Civ. No. 1:88-CV-2660-JOF (N.D. Ga. Jan. 9, 1990); NBC Subsidiary (KCNC-TV) v. Video Monitoring Services of America, Inc., Civ. No. 88-Z-234 (D. Colo. July 27, 1989); Georgia Television Co. v. TV News Clips of Atlanta, Inc., 9 U.S.P.Q. 2d (BNA) 2049 (N.D. Ga. 1989).
6. S. 1805, 102nd Cong. (1st Sess. 1991).
7. News monitoring: Hearing before the S. Subcomm. on Patents, Copyrights, and Trademarks of the Committee on the Judiciary on S. 1805, a bill to amend Title 17, United States Code, to clarify news reporting monitoring as a fair use exception to the exclusive rights of a copyright owner, 102nd Cong. (1992), hereinafter “News monitoring hearing”.
8. International Association of Broadcast Monitors President Ed Moser separately testified during this hearing, but his statement largely echoed Cohen’s points.
9. Patterson’s argument that it was wrongly decided was that the Eleventh Circuit’s permanent injunction “gave perpetual copyright protection, unlimited in nature, to protect uncopyrightable as well as abandoned material, and this is wholly contra to what the 1976 Copyright Act provides.” This appears to erroneously conflate right with remedy.
10. S. 23, 103rd Congress, 1st Sess. (1993).
11. News monitoring hearing at 265-266.
12. See Expert Report and Declaration of Beth Knobel, Ph.D. at 4-5, Fox News Network, LLC, v. TVEyes, Inc., No. 1:13-CV-05315 (SDNY 2015) (No. 100), hereinafter “Knobel declaration” (“it was easy for me to download an entire episode of NBC Nightly News with Brian Williams without commercials from TVEyes in five high definition video clips”).
13. News monitoring hearing at 29.
14. See Knobel declaration at 26, “the TVEyes Content-Delivery Features are designed to encourage users to download and publicly distribute video clips. TVEyes also touts the ability to use these features for those purposes in its marketing materials and in communications with its clients.”
15. News monitoring hearing at 264.
16. See, e.g., Lara O’Reilly, Most Young People Say They Have Stopped Watching TV, Business Insider (Jan. 26, 2015).
17. Knobel declaration at 4.
18. See, Harper & Row Publishers, Inc. v. Nation Enterprises, 471 US 539, 562 (1985) (“The fact that a publication was commercial as opposed to nonprofit is a separate factor that tends to weigh against a finding of fair use… The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.”).

The US Patent and Trademark Office (USPTO) held a public meeting on April 1 to discuss how the federal government could facilitate the development of the online licensing environment for copyrighted works. Specifically, the USPTO was interested in hearing how the government could encourage “development and use of standard identifiers for all types of works of authorship, interoperability among databases and systems used to identify owners of rights and terms of use, and a possible portal for linking to such databases and to licensing platforms”—a portal possibly modeled after the United Kingdom’s Copyright Hub, launched nearly two years ago. In other words, how can we make online licensing easier?

During the audience comment period of the meeting, Jonathan Band, here representing the Library Copyright Alliance, 1The Library Copyright Alliance is an advocacy organization whose members include the American Library Association, the Association of Research Libraries, and the Association of College and Research Libraries. Band also represents the CCIA, a “membership organization for a wide range of companies in the computer, Internet, information technology, and telecommunications industries”, whose members include Amazon, Google, and Pandora. stood up to say,

In the morning, I felt pretty good, because it seemed—you know, it was a very technical conversation in talking about standard definitions, it talked about interoperability, very focused obviously on the specific problems of the music industry in this country and all the complexity of the way it’s structured.  And, so, I felt okay.  I felt this is not really threatening the interests of libraries and their users.

And then we had this afternoon’s conversation, which I frankly have found quite alarming. And what I found very alarming is in the presentation about the Copyright Hub that it seemed—you know, the examples were about educational uses or personal uses and that those were the kinds of uses that should be licensed. And then, you know, when [USPTO Chief Policy Officer and Director for International Affairs] Shira [Perlmutter] was sort of introducing this panel, talking about low-value uses, and I say, okay, I get in the morning when we were talking about, you know, commercial works and commercial uses, you know, that makes sense, I get that.

But when you start talking about low-value uses, I say, okay, they’re talking about me, you know, they’re talking about what my people are doing. And, so, you know, I know there’s been a few references to fair use during the course of this panel, but, you know, my ultimate point here is that we’re very worried that this discussion sort of leads to a place where fair use is undermined. I mean, we’re comfortable where fair use in this country is now. I know some of you on the panel are not, and … the fact that you like all this makes—is also alarming to me. But, you know, the bottom line is, you know, you have to—you know, there’s a lot of skepticism in the library community about where this could end up.

In short, “We should not make online licensing easier.”

The “licensing undermines fair use” talking point was expected, and several panelists rebutted Band’s hand-wringing. But what was not entirely expected was what occurred several minutes later when another audience member stood up, and said,

I am Janice Pilch, Copyright and Licensing Librarian at Rutgers University Libraries. And I want to say that I didn’t find anything said this afternoon to be alarming. I don’t think that any ideas expressed this afternoon or the idea of the Hub is incompatible with copyright limitations and exceptions. We don’t—it doesn’t mean that we would cut them out of the picture; it doesn’t mean that they would go away.

Pilch added, “On the other hand, as [Songwriters Guild of America President] Rick Carnes said this morning, it all starts with creators. And if we cut creators out of the picture, we’re not helping anything. And that should be the primary thing that we think about in using works.” I couldn’t have said it better myself.

The public dissent from Band by a librarian suggests that not all in that community accept the view that user rights can only come at the sacrifice of author rights. The public interest might instead be served by recognizing both have interests, and these interests are mutually reinforcing. What librarian, after all, doesn’t hold books and authors in high regard? And what author wouldn’t cite libraries as playing a role in inciting their interest in writing? The suggestion that authors and publishers would want to undermine uses of their works outside their exclusive rights secured by copyright law is alien to those authors and publishers.

Nevertheless, it’s true that rhetoric as heated up in recent decades in the copyright arena. Some of this rhetoric has centered around the fair use doctrine. As Justin Hughes noted in a recent address, fair use has become “a principal arena in the struggle between proponents and opponents of IP.” This is not unexpected, the open-ended and vague nature of the doctrine practically invites struggle. It is also an antagonistic doctrine: someone wins, someone loses. Either a copyright owner loses all right to a use, or a copyright user faces full legal liability for infringement.

Band’s remarks illustrate one particular view that has emerged from this stuggle: the idea that fair use is under attack, and is the only thing standing between purely private interests and a broader public interest. This view is unfounded.

At this year’s Fordham IP conference former US Copyright Office General Counsel and retired Proskauer Rose partner Jon Baumgarten reiterated the important point that while there may be concern over expansive directions the fair use doctrine has taken in recent years, that does not translate into opposition to fair use itself from authors and copyright owners. Said Baumgarten,

My first concern is that the fair use doctrine is apparently moving far away from the objective of ancillary or incidental furthering of independent authorship. I deliberately used the terms “ancillary” and “incidental.” I do not mean unimportant, I do not mean not valuable; I just mean occasional and ancillary to the creation of a new work of authorship.

I think fair use is indeed quite important. I represented publishers of biographies, histories, historical fiction, newspapers and documentaries for many years. We had to believe in and exercise fair use or we could not survive. So I am not “anti-fair use” by any means.

This support for traditional fair use is not merely lip service. The only statutory change to fair use since the 1976 Copyright Act came in 1992, when Congress amended § 107 to add that “The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.” This expansion of fair use was aided by lobbying from authors and publishers. 2See, e.g., William Patry, Copyright Law and Practice, Amendments to the 1976 Act (2000) (“The legislation was introduced out of misplaced concerns by some publishers and authors that the Second Circuit’s decisions in Salinger v. Random House, Inc. and New Era Publications International ApS v. Henry Holt & Co. would make the publication of biographies and history using unpublished material more difficult by allegedly erecting a per se rule against fair use of unpublished works.”); Accord Statement of Floyd Abrams, Hearing: Fair Use and Unpublished Works, Joint Hearing on S.2370 and H.R.4263, pg 186 (July 11, 1990) (Expressing support of legislation on behalf of, inter alia, Authors Guild and Association of American Publishers).

This rhetoric also draws focus from other mechanisms in the copyright framework that can balance the plurality of interests, such as licensing. Too often forgotten are the benefits that licensing offers. Since licensing agreements are the result of negotiations, they approach mutually beneficial ends. On a more general note, they encourage goodwill and collaboration. The absense of formal inclusion mechanisms like licensing invites antagonism and opportunism. 3See, generally, Daniel Kelly, The Right to Include, 63 Emory Law Journal, 857 (2014). Licensing also provides certainty and reduces exposure to risk.

That’s not to say licensing can solve all problems; there are certainly legitimate concerns on both sides that can raise challenges. Libraries want to make sure that licensing of digital works does not unduly impede their circulation and archival missions. Authors and publishers want to make sure they can continue to recoup their investment in creation and dissemination of new works.

Statutory exceptions play an important role as well. Though not as flexible as fair use, they provide far greater certainty since they spell out exactly what is permitted. At the House Judiciary Committee’s final copyright review hearing last month, US Register of Copyrights Maria Pallante identified a number of issues ripe for legislative action. Among these issues was updating the Section 108 library exceptions. Pallante said, “The Office agrees that the provisions should be comprehensible and should relate logically to one another, and we are currently preparing a discussion draft. This draft will also introduce several substantive changes, in part based upon the recommendations of the Study Group’s 2008 report. It will address museums, preservation exceptions and the importance of ‘web harvesting’ activities.”

Obviously, the details will be determinative, but the principle behind the recommendation is a good one, and no cause for alarm.

References   [ + ]

1. The Library Copyright Alliance is an advocacy organization whose members include the American Library Association, the Association of Research Libraries, and the Association of College and Research Libraries. Band also represents the CCIA, a “membership organization for a wide range of companies in the computer, Internet, information technology, and telecommunications industries”, whose members include Amazon, Google, and Pandora.
2. See, e.g., William Patry, Copyright Law and Practice, Amendments to the 1976 Act (2000) (“The legislation was introduced out of misplaced concerns by some publishers and authors that the Second Circuit’s decisions in Salinger v. Random House, Inc. and New Era Publications International ApS v. Henry Holt & Co. would make the publication of biographies and history using unpublished material more difficult by allegedly erecting a per se rule against fair use of unpublished works.”); Accord Statement of Floyd Abrams, Hearing: Fair Use and Unpublished Works, Joint Hearing on S.2370 and H.R.4263, pg 186 (July 11, 1990) (Expressing support of legislation on behalf of, inter alia, Authors Guild and Association of American Publishers).
3. See, generally, Daniel Kelly, The Right to Include, 63 Emory Law Journal, 857 (2014).

On January 12, photographer Michael Kienitz asked the Supreme Court to review the Seventh Circuit’s decision in Kienitz v. Sconnie Nation. Sconnie Nation waived its brief, though the Media Institute filed an amicus brief in support of Kienitz.

The issue is fair use, specifically whether the Seventh Circuit split with the Second Circuit on the application of the “transformative use” test with its decision.

Kienitz takes place in the town of Madison, Wisconsin, where, several years ago, the Mayor sought to shut down an annual block party. Sconnie Nation, a novelty t-shirt maker, printed up a handful of t-shirts with a photo of the mayor and the phrase “Sorry for partying.” The photo was originally taken by Kienitz, a journalist and conflict photographer, and used without permission. Kienitz sued Sconnie Nation for copyright infringement.

Sconnie Nation asserted fair use, and the district court agreed, granting summary judgment in favor of the defendant.

On appeal, the Seventh Circuit affirmed the lower court’s judgment but criticized its reasoning. Specifically, it took aim at the court’s reliance on the “transformative use” test, saying, “That’s not one of the statutory factors, though the Supreme Court mentioned it in Campbell v. Acuff-Rose Music.” It observed that the Second Circuit has embraced this test, most recently in its decision in Cariou v. Prince, where it “concluded that ‘transformative use’ is enough to bring a modified copy within the scope of §107.” Writing for the Seventh Circuit, Judge Easterbrook said,

We’re skeptical of Cariou‘s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107 but also could override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2). Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).

The court nevertheless found the use fair, saying the t-shirts have not “reduced the demand for the original work.”

While Cariou’s approach to transformative use has been criticized before, 1See, e.g., Patricia Cohen, Photographers Band Together to Protect Work in ‘Fair Use’ Cases, New York Times, Feb. 21, 2014. Kienitz represents the first Circuit Court decision to do so.

Recall, Cariou involved the unauthorized appropriation of photographs of working-class photographer Patrick Cariou by celebrity artist Richard Prince. 2Cariou v. Prince, 714 F. 3d 694 (2d. Cir. 2013). The Second Circuit held that 25 of Prince’s paintings were fair use, despite “Prince’s deposition testimony that he ‘do [es]n’t really have a message,’ that he was not ‘trying to create anything with a new meaning or a new message,’ and that he ‘do[es]n’t have any … interest in [Cariou’s] original intent.'” The court said that “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.” The Supreme Court subsequently denied to review the Cariou decision.

I think Cariou was wrongly decided. But whether or not Kienitz represents a good vehicle for Supreme Court review, I think the occasion does provide a good place to reiterate the importance of necessity to fair use.

Judge Easterbrook raises this point, though it is ultimately of no help to Kienitz. Easterbrook observes:

[D]efendants did not need to use the copyrighted work. They wanted to mock the Mayor, not to comment on Kienitz’s skills as a photographer or his artistry in producing this particular photograph. There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many non-copyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors. (Many copyright owners would block all parodies, for example, and the administrative costs of finding and obtaining consent from copyright holders would frustrate many academic uses.)

Fair Use and Necessity

I’m not the first to describe fair use in terms of necessity. Alan Latman, going all the way back to his seminal 1958 study on fair use as part of the Copyright Law Revision process leading to the current Act, wrote:

Practical necessity is at times the rationale of fair use. Thus article 10 of the law of Argentina requires that an excerpt be “indispensable” to the purpose of the later work. The modus operandi of certain fields requires that the rights of each author yield to a step-by-­step progress. This consideration is often linked to the constitutional support for fair use as an indispensable tool in the promotion of “science.” Practical necessity and constitutional desirability are strongest in the area of scholarly works.

Similarly, in reviews of a work, a certain amount of reconstruction is often necessary; and in burlesque, the user must be permitted to accomplish the “recalling or conjuring up of the original.” Of more questionable necessity is the use of an earlier work in the preparation of a compilation. However, extensive use of earlier works as guides and checks appears to be common in this type of work which, although perhaps not achieving the intellectual aims inherent in the constitutional objective of copyright, does produce useful publications. 3Alan Latman, Fair Use of Copyrighted Works, pp 30-31, Copyright Law Revision Study No. 14, US Copyright Office (1958).

More recently, David Fagundes ruminates on the idea in a 2011 post, South Park & a Necessity Theory of Fair Use’s Parody/Satire Distinction:

Parody/satire may not track well onto the idea of transformativeness, but I do think it tracks well onto the idea of necessity.  Necessity is a familiar defense to property torts.  In the context of trespass, for example, emergency can entitle yachters stranded on a stormy lake to tie up at a stranger’s dock without permission, on the theory that avoiding the loss of their lives is more important than respecting the owner’s negative liberty (remember Ploof v. Putnam?).

And there are others who have looked at the idea of necessity in fair use, either favorably 4E.g., David Lange & Jessica Lange Anderson, Copyright, Fair Use and Transformative Critical Appropriation (working paper) (2011) (arguing that “fair use must be understood to make deliberate room for transformative appropriation of copyrighted work whenever the appropriation and transformation are necessary steps toward the realization of significant social criticism”). or critically. 5E.g., John Tehrenian, Infringement Nation: Copyright 2.0 and You, p. 41 (Oxford Univ. Press 2011) (“The Supreme Court’s distinction between satire and parody in the application of the fair use test is ultimately unsatisfying. Such a formulation reduces fair use to a test about necessity. Thus, where use is necessary to produce a form of speech (parody), it will be reluctantly tolerated as fair. But, where use is unnecessary to produce a form of speech (satire), it will not be tolerated. Such a conceptualization of fair use is highly propertized, allowing borrowing only when conditions require it. Such a view casts fair use as a privilege, not a right—a stark contrast to the former view of copyright itself as a privilege rather than a natural right. Under a utilitarian vision of copyright, progress in the arts rather than a necessity calculus should drive the fair use doctrine. As a consequence, there is no inherent reason why satire should be subject to different fair use rights than parody.”)

Fair Use Justifications

Necessity derives from the justifications for fair use.

The earliest justification for fair use is grounded in the goals of copyright law itself. That is, “that a certain degree of latitude for the users of copyrighted works is indispensable for the ‘Progress of Science and useful Arts.’” 6Alan Latman, Fair Use of Copyrighted Works, pg 7, Copyright Law Revision Study No. 14, US Copyright Office (1958); accord Campbell v. Acuff-Rose Music, 510 US 569, 575 (1994) (“From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . . .’”

In one of the earliest law review articles on fair use, Judge Yankwich concludes:

[T]he earnest scholar and student, be he reviewer, critic or scientist in the same field, should have reasonable access to the work of others, lest we put—in the words of Lord Ellenborough—“manacles upon science.” On the whole, the law of “fair use,” as evolved by the courts, is a wise synthesis of conflicting rights which, while safeguarding the author, avoids injury to the progress of ideas which would flow from an undue “manacling” of others in the reasonable use of copyrighted material.7Leon R. Yankwich, What is Fair Use? 22 Univ. of Chicago Law Review 203, 215 (1954).

More recently, fair use has also been justified on free speech grounds. The Supreme Court has said on several occasions that fair use is one of copyright’s “built-in First Amendment accommodations”; it, along with doctrines like the idea-expression dichotomy, is “generally adequate” to address “First Amendment concerns.” 8Eldred v. Ashcroft, 537 US 186, 219 (2003). In Eldred v. Ashcroft, the Court said fair use “allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances.” When the expression itself is essential to a further purpose, such as news reporting or commentary, then fair use may allow copying. When it’s not essential, fair use should not apply, as the Supreme Court said in Harper & Row v. Nation Enterprises, where it held the unauthorized, verbatim copying of 300 words from an unpublished manuscript was not fair use:

Nor do respondents assert any actual necessity for circumventing the copyright scheme with respect to the types of works and users at issue here. Where an author and publisher have invested extensive resources in creating an original work and are poised to release it to the public, no legitimate aim is served by pre-empting the right of first publication. The fact that the words the author has chosen to clothe his narrative may of themselves be “newsworthy” is not an independent justification for unauthorized copying of the author’s expression prior to publication. To paraphrase another recent Second Circuit decision:

“[Respondent] possessed an unfettered right to use any factual information revealed in [the memoirs] for the purpose of enlightening its audience, but it can claim no need to ‘bodily appropriate’ [Mr. Ford’s] ‘expression’ of that information by utilizing portions of the actual [manuscript]. The public interest in the free flow of information is assured by the law’s refusal to recognize a valid copyright in facts. The fair use doctrine is not a license for corporate theft, empowering a court to ignore a copyright whenever it determines the underlying work contains material of possible public importance.” [Emphasis added.] 9Harper & Row v. Nation Enterprises, 471 US 539, 557-58 (1985).

Taken together, these justifications suggest that throughout the history of fair use, there has been this idea that some overriding purpose is required to privilege a use that would otherwise be infringing. And the use of the original work must be necessary to the new work.

Campbell v. Acuff-Rose

This is precisely what the Supreme Court held in Campbell v. Acuff-Rose. In Campbell, the publishers of “Oh Pretty Woman,” written and recorded by Roy Orbison and William Dees, sued 2 Live Crew after it released “Pretty Woman,” a take-off on the Orbison classic that incorporated numerous elements from the song, including the famous bass riff, and added ribald rap lyrics. The district court had found the 2 Live Crew song to be a parody of the Orbison song, and the case made it to the Supreme Court on the issue of fair use.

This was the first time the Court would weigh in on whether parody may be fair use. It held that it could, saying, “Like less ostensibly humorous forms of criticism, it can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.” In doing so, it drew a sharp distinction between parody and satire, defining the former as a work that comments on an existing work through mimicry while the latter copies for a non-related purpose.

For the purposes of copyright law, the nub of the definitions, and the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works. If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

The Court went on to point out that this distinction hinges on necessity.

Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing. [Emphasis added.]

The necessity requirement makes sense in light of the underlying justifications of fair use. If copying of expression is necessary for some speech purpose, fair use may excuse it so that copyright protection does not overextend and impinge on free speech interests.

When, however, copying expression is not necessary to a new work, there is no free speech issue, since the copyright owner cannot prevent others from communicating the facts and ideas conveyed by her work.

This distinction is illustrated in the Ninth Circuit’s 2012 Monge v. Maya Magazines decision. 10688 F. 3d 1164. Maya, a gossip magazine, had published photos taken of a clandestine wedding of a young pop singer, one who maintained being single as part of her image. Maya argued fair use, characterizing the publication as news reporting and claiming, in part, that its “publication transformed the photos from their original purpose—images of a wedding night—into newsworthy evidence of a clandestine marriage.” It relied on the First Circuit’s decision in Núñez v. Caribbean Int’l News Corp. as support.

In Núñez, a newspaper had reprinted, without authorization, risqué photographs that had surfaced of a Miss Universe winner. The discovery of the photographs had sparked an inquiry into whether the model was fit to retain the Miss Universe title. The court disagreed that Núñez supported Maya’s fair use argument.

Although Núñez also involved news reporting, the similarities end there. The controversy there was whether the salacious photos themselves were befitting a “Miss Universe Puerto Rico,” and whether she should retain her title. In contrast, the controversy here has little to do with photos; instead, the photos here depict the couple’s clandestine wedding. The photos were not even necessary to prove that controverted fact—the marriage certificate, which is a matter of public record, may have sufficed to inform the public that the couple kept their marriage a secret for two years. [Emphasis added.]

Similarly, some use of expression may be necessary for commentary, criticism, quotation, or parody—all purposes that further the underlying goal of copyright in advancing art, science, and knowledge. Here, it bears repeating that, as a general rule, the protection of copyright will serve the purposes of copyright. When the original work is fungible to the new work—when there are alternative sources of raw materials for the second creator to draw upon—then the creation of the new work is not blocked. 11Credit to Jasmine Abdel-khalik, from whom I got the idea of “fungibility.” The second creator can “work[] up something fresh”, 12Joseph Fishman explains how this furthers copyright’s purpose in his forthcoming article, Creating Around Copyright. turn to the public domain for material, or find a work with more favorable licensing terms. 13In fact, entire industries providing stock photos, footage, and music have grown up to meet this demand. Copyright’s purpose is to create a commercial market for creative works, and these outcomes are consistent with a functioning marketplace. When fair use privileges uses of original works that are not necessary to the creation of new works, it undermines this market, and, consequently, undermines copyright.

Toward a Fair Use Standard

Focusing on the necessity of the original work to the new use also puts the other factors into sharper focus. Take, for example, the third factor, which looks at “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” If there is no connection between the original and new works, what standard guides courts in weighing this factor? How much use of a work is “fair” when it is not necessary to a new work? In this case, the inquiry becomes redundant with a substantial similarity analysis.

But when there is a connection between new and original works, courts have a standard to guide analysis of the third factor. Campbell provides a clear application of this principle in the context of parody.

Parody’s humor, or in any event its comment, necessarily springs from recognizable allusion to its object through distorted imitation. Its art lies in the tension between a known original and its parodic twin. When parody takes aim at a particular original work, the parody must be able to “conjure up” at least enough of that original to make the object of its critical wit recognizable. What makes for this recognition is quotation of the original’s most distinctive or memorable features, which the parodist can be sure the audience will know. Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song’s overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original. But using some characteristic features cannot be avoided.

In fact, it’s often forgotten that the Supreme Court did not hold that 2 Live Crew’s use was fair. It instead remanded to the district court to determine fair use, and in its discussion, it continues to be clear that a necessity requirement underlies fair use.

Suffice it to say here that, as to the lyrics, we think the Court of Appeals correctly suggested that “no more was taken than necessary,” but just for that reason, we fail to see how the copying can be excessive in relation to its parodic purpose, even if the portion taken is the original’s “heart.” As to the music, we express no opinion whether repetition of the bass riff is excessive copying, and we remand to permit evaluation of the amount taken, in light of the song’s parodic purpose and character, its transformative elements, and considerations of the potential for market substitution sketched more fully below.

The two parties settled following the Supreme Court decision, agreeing to a license.

In recent decades, fair use has categorically expanded to include the copying of entire works for new purposes rather than new works—for example, time-shifting, 14Sony Corp. of America v Universal City Studios, 464 U.S. 417 (1984). mass digitization, 15Authors Guild v. Hathitrust, 755 F.3d 87 (2nd Cir. 2014). or image search. 16Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir. 2003). In these situations, necessity may not play the same role, if it plays one at all. But in its historical application—as a privilege for the incorporation of expression from an existing work into a new work—courts should look at necessity. Whether necessity is an essential element of fair use is a separate question, but at the very least, it should play a key role in any fair use inquiry to ensure that the doctrine remains consistent with copyright’s ultimate goals.

References   [ + ]

1. See, e.g., Patricia Cohen, Photographers Band Together to Protect Work in ‘Fair Use’ Cases, New York Times, Feb. 21, 2014.
2. Cariou v. Prince, 714 F. 3d 694 (2d. Cir. 2013).
3. Alan Latman, Fair Use of Copyrighted Works, pp 30-31, Copyright Law Revision Study No. 14, US Copyright Office (1958).
4. E.g., David Lange & Jessica Lange Anderson, Copyright, Fair Use and Transformative Critical Appropriation (working paper) (2011) (arguing that “fair use must be understood to make deliberate room for transformative appropriation of copyrighted work whenever the appropriation and transformation are necessary steps toward the realization of significant social criticism”).
5. E.g., John Tehrenian, Infringement Nation: Copyright 2.0 and You, p. 41 (Oxford Univ. Press 2011) (“The Supreme Court’s distinction between satire and parody in the application of the fair use test is ultimately unsatisfying. Such a formulation reduces fair use to a test about necessity. Thus, where use is necessary to produce a form of speech (parody), it will be reluctantly tolerated as fair. But, where use is unnecessary to produce a form of speech (satire), it will not be tolerated. Such a conceptualization of fair use is highly propertized, allowing borrowing only when conditions require it. Such a view casts fair use as a privilege, not a right—a stark contrast to the former view of copyright itself as a privilege rather than a natural right. Under a utilitarian vision of copyright, progress in the arts rather than a necessity calculus should drive the fair use doctrine. As a consequence, there is no inherent reason why satire should be subject to different fair use rights than parody.”)
6. Alan Latman, Fair Use of Copyrighted Works, pg 7, Copyright Law Revision Study No. 14, US Copyright Office (1958); accord Campbell v. Acuff-Rose Music, 510 US 569, 575 (1994) (“From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . . .’”
7. Leon R. Yankwich, What is Fair Use? 22 Univ. of Chicago Law Review 203, 215 (1954).
8. Eldred v. Ashcroft, 537 US 186, 219 (2003).
9. Harper & Row v. Nation Enterprises, 471 US 539, 557-58 (1985).
10. 688 F. 3d 1164.
11. Credit to Jasmine Abdel-khalik, from whom I got the idea of “fungibility.”
12. Joseph Fishman explains how this furthers copyright’s purpose in his forthcoming article, Creating Around Copyright.
13. In fact, entire industries providing stock photos, footage, and music have grown up to meet this demand.
14. Sony Corp. of America v Universal City Studios, 464 U.S. 417 (1984).
15. Authors Guild v. Hathitrust, 755 F.3d 87 (2nd Cir. 2014).
16. Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir. 2003).