Meera Nair

Posts Tagged ‘fair use’

second circuit stays on message

In Case Reviews on June 15, 2014 at 1:54 pm

Last week, the United States Court of Appeals for the Second Circuit added to an already-healthy body of American affirmative decisions concerning fair use. In this instance, Authors Guild, Inc. v. HathiTrust, the scanning of entire books to allow for a full-text search of the content was given resounding support. In the process, the judges further explored the nuance of the commercial and transformative considerations inherent to discussion of fairness. Moreover, as Pamela Samuelson observes and Kevin Smith draws explicit attention to, the decision shows a coalescing of opinion with respect to transformative use among multiple circuits. The end result is strong guidance in the United States, and a discussion which benefits any jurisdiction that must mediate between control and use of copyrighted works, via the language of fairness.

Like the Google Books project (see here for my coverage of that district court decision), the roots of this case were established in 2004 with a scanning project in partnership with Google. Briefly, several American research universities arranged to have their library book holdings scanned and stored in electronic form. HathiTrust was established to operate the HathTrust Digital Library (HDL); currently, over 80 colleges, universities and non-profit organizations can apply full text search capability to over 10 million works spanning a myriad of languages and subject matter. But, unlike Google Books, snippets of content are not made available; instead, members can only obtain bibliographic and referential information. Exception is made only for the print-disabled; under such circumstances, content is provided.

It is more than curious that authors and their representatives should take issue with this venture; any project that enables people to find information about books, become interested in them, and possibly acquire them, would seem to be of benefit to authors. Apparently not so. The Authors Guild and its allies brought litigation forward. Losing on the grounds of fair use at the district court in 2012, the Guild pressed on with an appeal. And now that too has been declared a loss. James Grimmelmann, (Professor of Law, University of Maryland) succinctly evaluates the decision:

… mass digitization to make a search engine is fair use, and so is giving digital copies to the print-disabled. The opinion on appeal is sober, conservative, and to the point; it is the work of a court that does not think this is a hard case.

But the fun is in the details. As readers likely know, four factors come into consideration with fair use.

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

Consistent with other fair use decisions of the past few years, transformative use is a key determinant. As such, the meaning of transformative was the necessary starting point. The judges turned to the American standard bearer of fair use case law, Campbell v. Acuff-Rose (1994) which draws from the writings of Pierre Leval (attorney and subsequent judge):

A use is transformative if it does something more than repackage or republish the original copyrighted work. The inquiry is whether the work “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message . … [T]he more transformative the new work, the less will be the significance of other factors that may weigh against a finding of fair use” (p.16-17).

Set upon this language, the analysis gets off to a brisk start:

The creation of a full‐text searchable database is a quintessentially transformative use. …  the result of a word search is different in purpose, character, expression, meaning, and message from the page (and the book) from which it is drawn (p.18).

The decision includes a plethora of examples of transformative uses, taken not only from the corpus of the Second Circuit but also from the Ninth and Fourth Circuits (p.19).

(2) The nature of the copyrighted work

This factor can be troublesome by virtue of the vagueness of the language. Whether the source of copying was unpublished or published, whether the work was creative or utilitarian, have been fodder for discussion. But as fair use has evolved, this factor is likely to be set aside when transformative use is established (p.20).

(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole

The Judges remind their readers that the position of the Second Circuit is: “[t]here are no absolute rules as to how much of a copyrighted work may be copied and still be considered a fair use (p.20).” As sufficient precedent exists which sanction the copying of entire works; they do not have to dwell too much upon this issue:

In order to enable the full‐text search function, the Libraries, as we have seen, created digital copies of all the books in their collections. Because it was reasonably necessary for the HDL to make use of the entirety of the works in order to enable the full‐text search function, we do not believe the copying was excessive (p.20-21).

Adjudication of fairness sets bounds to words like necessary and reasonable by virtue of the use the source work was put to. It is increasingly unlikely that any future court will be swayed by mere quantification of the amount used.

However, as the Guild took issue with the copies made to achieve technological efficiency and disaster preparedness, the Judges were required to devote some time to what ought to be routinely accepted by now – that copying happens when infrastructure is predicated upon digital technology:

 HDL’s services are offered to patrons through two servers, one at the University of Michigan (the primary server) and an identical one at the University of Indiana (the “mirror” server) … According to the HDL executive director, the “existence of a[n] [identical] mirror site allows for balancing the load of user web traffic to avoid overburdening a single site, and each site acts as a back‐up … in the event that one site were to cease operation (for example, due to failure caused by a disaster, or even as a result of routine maintenance).” (p.21)

The use of two encrypted tape backups was also deemed an appropriate precaution, should disaster bring about large-scale data loss at both servers.

(4) The effect of the use upon the potential market for or value of the copyrighted work

Here, the judges’ language bodes particularly well for fair users, but not so well for the larger avarice of some copyright holders:

…  it is important to recall that the Factor Four analysis is concerned with only one type of economic injury to a copyright holder: the harm that results because the secondary use serves as a substitute for the original work…. In other words, under Factor Four, any economic “harm” caused by transformative uses does not count because such uses, by definition, do not serve as substitutes for the original work (emphasis mine, p.22).

Thus, despite the Guild’s claim that the use of each book represents a lost license-to-search-the-book, the judges determined that no economic harm has been inflicted as full-text search capability is not a substitute for the original works.

Grimmelmann observes the lack of reference to American Geophysical (1996) but its ghost is there. That case contributed greatly to fair use’s dysfunctional period in the United States, when any use was deemed unfair because it could have been licensed. (Canada has avoided such circular reasoning; our Supreme Court nipped that in the bud with its insistence during CCH Canadian (2004) that the presence of a license was irrelevant to a decision of fair dealing.)

The route by which the Court rebuts the lost-license argument is puzzling. In the initial explanation of the four factors (p.16-17), the fourth factor is deemed the “most important” (citing Harper & Row v. Nation (1985)—the famous scooping from Gerald Ford’s as-of-then-unpublished memoir). But in its analysis, the Court quickly invokes Campbell’s reminder that only secondary uses that poach the market for the original are subject to censure. Given, as Smith notes, that Campbell is the leading Supreme Court decision, the Second Circuit took an odd route to get there.

But it is hard to believe that the trio of judges were casual or careless in the composition of their decision. In judicial opinion, words are chosen with the utmost of care. Which invites the question: why this route?

Campbell also ushered in a change in procedure; when examining potential fair use, judges must avoid imposing a hierarchy among the four factors. To return to a hierarchy of factors would seem either dangerous, or at least ill-advised. Or, this might be a calculated effort on the part of the Second Circuit to irrevocably consign any apparition of American Geophysical to the dustbins of history.

The Second Circuit has worked diligently towards rehabilitating fair use, to make it a robust exception. Notably, in two key decisions in 2006 (Bill Graham Archives v. Dorling-Kindersley and Blanch v. Koons), less attention was paid to market consideration, with a conspicuous disinterest in adding to licensing revenue even when mechanisms of licensing existed. Yet, that message does not appear to have been widely received. Perhaps the Second Circuit has decided to make their message more explicit by deliberately invoking the earlier edict that the market reigns supreme, but under the strict boundary of the original market.

Given that Second Circuit’s jurisdiction includes the nerve-centre of American publishing, this could have significant ramifications. At the very least, it ought to give the Authors Guild something to reflect upon before the Guild moves ahead on the Google Books Appeal. [see update below]

With a nod to the late Lyman Ray Patterson, the events that gave rise to copyright and fair use were the competitive (or anti-competitive) actions of professional publishers. Copyright’s reach only extended to the regulation of sales of substantially similar works. Effectively, the Authors Guild gave the Second Circuit a reason to offer up language that ensures future market consideration must expressly reject rent-seeking behavior and only support copyright holders when a new work trespasses into the same market as that of the original work.

The four factor analysis concerning the provision of works for the print-disabled was also handled well and the provision deemed fair use. It would be nicer though, if everyone could simply say it is the right thing to do, and leave it at that. With the anniversary of the Marrakesh Treaty approaching, there is more to come on the subject of making copyrighted works accessible to print-disabled communities everywhere.

Update July 11 The Authors Guild appears intent on pursuing the appeal against Google Books. Readers may recall that this scanning project was deemed fair use at its district court hearing. The Authors Alliance has a nice post describing their support for Google Books (with a link to their amicus brief).

will no one take on Disney?

In Case Reviews on April 24, 2014 at 9:42 pm

Earlier this week, Alex Tabarrok posted “Copyright is out of Control,” at Marginal Revolution. Tabarrok describes a situation whereby an established publisher is wary of using public domain images in books, as the status of public domain does not guarantee an absence of trouble-making from would-be plaintiffs. Tabarrok also describes an inability to use a licensed image:

To illustrate the point that, contrary to what is often argued, a rich person might get more from another dollar than a poor person we have in “Modern Principles a movie still of Scrooge McDuck swimming in money. We think the image speaks for itself but apparently that is a problem. The rights to the photo are–we are told–not the same as the rights to the characters shown within the photo. Thus, even though we have bought and paid for the right to print the photo, to ensure that the use of the characters within the photo falls under fair use we must discuss, comment on and critique the content of the photo in the text.

Tabarrok’s dismal conclusion is:

I am not critiquing our publisher or their lawyers. Bear in mind that this is coming to us from the very highest legal counsel of a multi-billion dollar firm. Thus, I do not doubt that the dangers are real and the legal analysis acute. The problem is copyright law itself.

The reaction to the piece is a quagmire of outrage and confusion, with some commentators protesting the very spectre of a prominent scholar flogging a $250 textbook, and yet wanting free use of an image. Again – according to Tabarrok’s post – the authors’ publisher had purchased a license to use the image. While the industry of educational publishing as a whole leaves much to be desired, what I find more than troubling about this piece is the impression, or lack thereof, it leaves of fair use. Quite likely, there are more details that Tabarrok was unable to include in the post, but clarification is needed.

An outsider reading the post may come away with the view that fair use is not something that is legitimate under appropriate circumstances, but rather a disputed corollary to purchasing a license for re-use of content. Such an interpretation, while no doubt pleasing to many copyright holders and their representatives, would be plain wrong.

Fair use is an exception to each grant of copyright; fair use allows for the use of copyrighted material without seeking authorization from, or making payment to, the copyright holder. The extent of what might be fair use is determined according to the circumstances at hand. Without further information, I can only assume that the extreme timidity of the publisher and its counsel is due to the association of McScrooge Duck to the Disney Corporation.

As fair use is only of issue if no license was obtained, consider a hypothetical situation where no license for use of the McScrooge Duck still was purchased. Would Tabarrok and his colleagues have a plausible argument for fair use in the inclusion of this still in their textbook? Case law suggests they would.

The following analysis draws primarily from the U.S. Supreme Court decision Campbell v. Acuff–Rose Music, Inc. (1994) and Appeals Courts’ decisions Bill Graham Archives v. Dorling Kindersley Ltd. (Second Circuit, 2006), Cariou v. Prince, (Second Circuit, 2013) and Dereck Seltzer v. Green Day Inc. (Ninth Circuit, 2013). For the sake of brevity, I have omitted citations.

Fair Use Analysis

According to Section 107:

… In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

In this hypothetical situation, a reasoned argument for fair use might include the following:

(1) purpose and character of the use

The reference to commercial or non-profit is of little concern in this instance. Courts have noted that the “crux of this distinction” lies in whether the party using the copyrighted material profits from the use. In this case, the image is hidden within the textbook; it does not serve as an advertisement for the book. Even if students are aware that the book includes such an image; it is unlikely that they would purchase the book purely on that basis.

Moreover, the fact that the publisher is a commercial entity is not a bar to a finding of fair use. The prevailing principle of the exception is the principle that guides the system of copyright as a whole; namely, does it further the progress of the Arts and Sciences, as specified in the U.S. Constitution? To answer that question, in terms of the first factor, greater weight has to be afforded to:  “the purpose and character of the use.”

The notion of transformative use is fast becoming a guide to any examination of the purpose and character of a work. As courts have grappled with balancing the rights of copyright owners versus those of copyright users, the notion of transformation has been given both precision and latitude. The prevailing language asks the question: “whether the new work merely supersede[s] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message?”

In this situation, the use of the still is not for the purposes of entertainment. (Nor is it to serve as the basis for appropriation art; nor is it necessary that textbook authors comment upon McScrooge Duck.) The photograph is engaged for a new purpose – that of resonating with a reader’s baser instincts concerning money.

Disney characters are ubiquitous to the modern world; even in its poorest corners, the duck, the mouse, the dog, etc. are recognizable. Appealing to symbols that are embedded in peoples’ childhood experiences is a means to invoking underlying thoughts. While some might favour a quotation of text to accomplish that task, visual imagery is equally eligible to that favour. Indeed, the corporate sector takes great pains to make images and stories they own, integral to everyday experience. Yet they too rely on past creations. In fact, this particular still might be unique to the purpose sought; the nomenclature of McScrooge Duck is directly traceable to Charles Dicken’s character of Ebeneezer Scrooge. Thus, this still does double-duty in its evocation of a miserly tycoon.

(2) nature of the copyrighted work

It has been suggested that the more creative a work is, the higher the standard needed for fair use to prevail. That the still image is a creative work, and thus deserving of protection, is without doubt. But mitigating this aspect is the extent to which the work has been published. The character of McScrooge was first published in 1947. (As an aside, it was created by Carl Barks and licensed to the Disney Corporation. Throughout this discussion, both the real and the hypothetical, it has been assumed that Disney has the exclusive license to all imagery of the character. But if use of the still was actually challenged by Disney, it would have to prove that ownership.) Published many times over in comic book and audio-visual genres, McScrooge’s copyright owner has controlled first publication. This tends to favour a later fair use.

(3) the amount and substantiality of the copyrighted work used

There is no doubt that the entire still has been used. But as multiple cases have emphasized, while no court has ever indicated that copying an entire work would sanction fair use, courts have recognized that sometimes such copying is necessary to make fair use of a work. The amount permissible is a consequence of what the work is and what the use is. Images fall within this category of necessarily-complete copies. While novels, lyrics, or perhaps even poems, may be divisible into representative snippets, images do not lend themselves to meaningful divisibility.

Moreover, the manner by which the entire image is incorporated into the book is likely to be different from the original form of the still. Textbooks will not devote large areas to glossy reproductions of an image; usually an image is reproduced in a small size and with lesser resolution.

(4) the effect of the use

In fair use’s darker days, the impact on market was given unduly wide interpretation and prominence. Any use was deemed an impact on the market and negated fair use as a whole. Fortunately, American courts have since recognized the circularity of those earlier pronouncements. A more nuanced approach of contemporary courts has led to the conclusion: “Where the allegedly infringing use does not substitute for the original and serves a ‘different market function,’ such factor weighs in favor of fair use.” As noted earlier, the manner by which the still is reproduced in a book will not physically serve the market for stills. That the still is being employed to serve a transformative use, indicates a different market function.

And perhaps most crucial; the fact that the publisher in this instance has been willing to pay for licensed content in the past does not negate its ability to practice fair use in the future.

Beyond analysis

With a more than reasonable claim to fair use, it might seem a mystery as to why any legal counsel to such a well-heeled publisher should reject using the still. But it may not be that mysterious. Academic presses are not well-known as advocates for better use of exceptions within the law, or preventing abuse by the law. And if a lawyer has been charged to protect the wellbeing of such a client, doing nothing with licensed content or avoiding any seemingly-precarious involvement of fair use, might seem the optimal strategy.

But this conduct is deleterious to the well-being of a larger constituency, namely all those who would seek to make legitimate use of copyrighted material. The viability of the exception is bolstered when people use it, and diminished when the exception is passed over in favour of unnecessary licensing or passive acquiescence to those who would like nothing better than effectively absolute control in the name of copyright.

Few authors or publishers could withstand even the hint of a copyright lawsuit. But surely a “multi-billion” dollar publishing house with expert legal counsel and highly respected authors under its wing could engage in fair use as appropriate to their business undertakings.

 

 

 

 

 

Google Books – another fair use illustration

In Case Reviews on November 16, 2013 at 10:34 pm

No doubt, readers have already taken in the good news: on 14 November 2013, the Google Books Project was deemed fair use by Judge Denny Chin of the Southern District of New York. Hailed as a stunning victory for libraries and their patrons, the visually disabled, and continued high-tech innovation, the details almost seem mundane – of course displaying snippets of a work is not a violation of copyright. That the law should uphold common sense seems only appropriate.

Yet this was a story that began with an uncertain ending. At its outset in 2004, the actions of Google struck many as audacious. The Google Books project necessarily involved scanning entire books. While there was always an argument for legitimate fair use – library books were scanned with permission from libraries, the majority of books were out of print, only snippets would be displayed, Google did not engage in any direct profiteering from its action, etc. – the dialogue of copyright did not yet embrace nuanced examinations of copying with open consideration of public benefit. To some, once a copy is made without permission, the copyright owner’s rights have been infringed and heads should roll.

If the Author’s Guild had successfully shutdown Google Books at the start, the public benefits of the project would never have seen the light of day. And it was those benefits that Judge Chin emphasized in his decision, even before providing the analysis of fair use. Paraphrasing some of the key elements from his list (starting on page 9): 

  • “Google Books provides a new and efficient way for readers and researchers to find books. … It provides a searchable index linking each word in any book to all books in which that word appears.” Chin emphasizes that Google Books has become an essential research tool and part of our information society landscape.
  •  “Google Books greatly promotes a type of research referred to as ‘data mining’ or ‘text mining.’” Chin pays particular attention to the brief prepared by Matthew L. Jockers, Matthew Sag and Jason Schultz on behalf of Digital Humanities and Law Scholars, and extolls the merits of the newer form of scholarship.
  • “Google Books expands access to books.” Chin draws attention to the “traditionally underserved populations,” and points out that not only are the books themselves more easily found but that “digitization facilitates the conversion of books to audio and tactile formats, increasing access for individuals with disabilities.” He also champions the “remote and underfunded libraries that need to make efficient decisions as to which resources to procure for their own collections or through interlibrary loans.”
  •  “Google Books helps to preserve books and give them new life.” Chin is clearly aware that older, and potentially out-of-print, books are falling apart. Scans will at least preserve the content.
  •  And, quite apart from merit of the project with respect to reading, research, under-served populations and preservation, “Google Books benefits authors and publishers.” With any selection of a snippet, users are easily connected to sellers of the books thereby increasing the potential for sales.

Of course, Chin does not omit the examination of fair use; he performs the analysis with ease and clarity.  Before, and after, he reminds us that the listed four factors need not be the only consideration in questions of fair use. He emphasizes that they are only a general guidance and that there might be other considerations. Although, for the purposes of this case, he only needed the traditional four factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

While fair use analysis allows for consideration of any purpose and character, American case law has long emphasized that transformative uses are fair. Chin has no difficulty assessing Google’s Book Project as transformative. “Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books (p.19).” Pointing to past successful arguments of fair use in the use of thumbnail images, Chin writes: “The display of snippets of text for search is similar to the display of thumbnail images … [to] help users locate books and determine whether they may be of interest (p.20).” And, with recourse to a fair use standard-bearer, the work of Judge Pierre Laval, Chin concludes the first factor by saying, “[Google Books] adds value to the original … [through] the creation of new information, new aesthetics, new insights and understandings (p.21).”

[Chin refuses to let the mere word “commercial” misdirect the claim of fair use. He points out that Google does not engage in direct commercial behaviour in connection to the snippets of text or the scans. “Even assuming Google's principal motivation is profit, the fact is that Google Books serves several important educational purposes (p.22).”]

(2) the nature of the copyrighted work

With the majority of the scanned holdings being published books, the availability of the snippets for the public is only an asset to the claim of the fair use.  Drawing from past case law, Chin writes: “Whether or not a work is published is critical to its nature under factor two because the scope of fair use is narrower with respect to unpublished works (p.23).”

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole

Chin begins with the reminder that the copying of entire works can be considered fair use. He then easily explains why Google’s entire copies are necessary and, happily enough, would never be available to serve as a substitute for the original:  “… as one of the keys to Google Books is its offering of full-text search of books, full-work reproduction is critical to the functioning of Google Books. Significantly, Google limits the amount of text it displays in response to a search (p.23).”

(4) the effect of the use upon the potential market for or value of the copyrighted work

To the complaints voiced by the Author’s Guild that Google Books would negatively impact the market and that the snippets could be collected into a substitutable book, Chin details the lack of logic within their arguments:

 Neither suggestion makes sense. Google does not sell its scans, and the scans do not replace the books. While partner libraries have the ability to download a scan of a book from their collections, they owned the books already — they provided the original book to Google to scan. Nor is it likely that someone would take the time and energy to input countless searches to try and get enough snippets to comprise an entire book. Not only is that not possible as certain pages and snippets are blacklisted, the individual would have to have a copy of the book in his possession already to be able to piece the different snippets together in coherent fashion.

And, the final rebuttal to the oddity of arguing that exposure would decrease sales:

An important factor in the success of an individual title is whether it is discovered — whether potential readers learn of its existence. Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays. Indeed, both librarians and their patrons use Google Books to identify books to purchase. Many authors have noted that online browsing in general and Google Books in particular helps readers find their work, thus increasing their audiences. Further, Google provides convenient links to booksellers to make it easy for a reader to order a book. In this day and age of on-line shopping, there can be no doubt but that Google Books improves books sales.

In his concluding remarks, Chin again returns to the merits of Google Books with respect to public benefit. The decision as a whole is only 30 pages and well worth reading.

With the Author’s Guild already positioning itself for appeal, this story is not yet over.  But with such a decisive endorsement of fair use, and keeping in mind that this examination was expressly ordered by the Second Circuit Court of Appeals, the likelihood of this decision being overturned is slim.

fair use – more lessons from the United States

In Case Reviews on August 10, 2013 at 8:24 pm

This past week, Sergio Muñoz Sarmiento (writer of Clancoo—the Source for Art & Law) described a paper written by Andrew Gilden & Timothy Greene, titled “Fair Use for the Rich and Fabulous.” They compare two cases of appropriation, tried by the same district and appeals courts, and express relief that some earlier misconceptions of fair use are being resolved. However, they also express concern that célebre seems to factor into the final judgement.

Sarmiento writes, “Those artists that are not as well-known or that opt to side-step the gallery system will in essence become the producers of raw materials for those artists who have the financial resources, marketing savvy, branding, and major gallery representation.” Almost on cue, a day later stories are circulating about another judgement of fair use; this also in favour of appropriation carried out by what appears to be the more established party. In this case a street-art image was incorporated into a set backdrop for a rock band. Graham Bowley, writing for the NY Times, gives the story and the outcome:

A federal appeals court on Wednesday ruled that the rock band Green Day had not infringed the rights of the illustrator and street artist Dereck Seltzer when it incorporated his artwork “Scream Icon” without permission in a video backdrop at its concerts during its 2009 21st Century Breakdown tour.

[Perhaps unintentional, but the NYT headline emphasizes the disparity in stature: “Judge Upholds Green Day’s Right to Use Artist’s Image for Concert”. Again, the “Artist” in question is Dereck Seltzer.]

That fame and fortune might play its part in a decision should not come as a surprise. In all walks of life, the establishment carry an implicit (and sometimes even explicit) advantage over newcomers. Nevertheless, with the Utopian hope that eventually all copyrights will be created equal, exploring this issue is helpful. The root question will always be – how to judge appropriation? This is not an easy question to answer. Fortunately, regardless of one’s own jurisdiction, litigation in the United States means teachable moments for all other countries who endeavor to develop flexible exceptions of their own.

So: Fair Use, Dereck Seltzer and Green Day. What happened?

On Wednesday, 7 August 2013, the Ninth Circuit Court of Appeals filed their opinion that the inclusion of Seltzer’s artwork was sufficiently transformative and supported by the four-factor analysis that shapes decisions of fair use. This followed a district court decision that also decreed fair use.

The story begins with Seltzer’s creation in 2003 of a work titled Scream Icon, “a drawing of screaming, contorted face (p.5).” Seltzer reproduced the work in posters and adhesive prints; some were sold, and some were given away. Many were “plastered on walls as street art in Los Angeles and elsewhere.” Five years later, Richard Staub (later a video designer for Green Day) photographed one such poster, by now somewhat worse for wear, amid a wall covered in street art and graffiti.

The following year Staub was subcontracted to Green Day to create video backdrops for a concert tour to promote a new album titled 21st Century Breakdown. The concerts featured thirty-two songs, each with their own backdrop. Seltzer’s work was modified for a video backdrop towards performance of a song titled “East Jesus Nowhere.” Staub explains that the song reflects “the hypocrisy of some religious people who preach one thing but act otherwise. . . . The song is about the violence that is done in the name of religion (p.6).”

[Seltzer’s original Scream Icon image, and the photograph taken by Staub, are in Appendix A and B of the opinion of the Ninth circuit.]  Writing for the court, Judge Diarmuid F. O’Scannlain explains the transformation:

What Staub ultimately created for this song is the allegedly-infringing work at the heart of this case, an approximately four-minute-long video. The video depicts a brick alleyway covered in graffiti. As “East Jesus Nowhere” is performed, several days pass at an accelerated pace and graffiti artists come and go, adding new art, posters, and tags to the brick alleyway. The graffiti includes at least three images of Jesus Christ, which are defaced over the course of the video. Throughout the video, the center of the frame is dominated by an unchanging, but modified, Scream Icon. Staub used the photograph he had taken at Sunset and Gardner, cut out the image of Scream Icon and modified it by adding a large red “spray-painted” cross over the middle of the screaming face. He also changed the contrast and color and added black streaks running down the right side of the face (p.6).

As to be expected, the case was examined via the four-factor analysis of American Fair Use; see 17 U.S.C. § 107

1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.

Remarking on the abundance of cases that elucidate or obfuscate the meaning of transformation, the  Court turned to definitive guidance via Campbell v. Acuff-Rose Music, Inc.,  (as influenced by Judge Pierre Leval, see here) to emphasize the importance of bringing forward “a further purpose or different character, altering the first with new expression, meaning or message (p.10).”

Drawing from Seltzer’s remarks that the original work addressed “themes of youth culture, skateboard culture, [and] insider/outsider culture (p.11),” O’Scannlain emphasizes that a new meaning—that of religion—was instilled through the modification and new context of the work:

With the spray-painted cross, in the context of a song about the hypocrisy of religion, surrounded by religious iconography, Staub’s video backdrop using Scream Icon conveys “new information, new aesthetics, new insights and understandings” that are plainly distinct from those of the original piece (p.12).

With regard to the clause concerning commerciality, came this assessment: “Green Day’s use of Scream Icon was only incidentally commercial; the band never used it to market the concert, CDs, or merchandise (p.14).”  Taken together, the first factor favours Green Day.

2. The nature of the copyrighted work.

Drawing from precedents that compare the creativity of the work against the degree  of first publication enjoyed by the creators, O’Scannlain writes “Scream Icon is a creative work meriting strong protection … [yet] Scream Icon was widely disseminated [by Seltzer], both on the internet and on the streets of Los Angeles before Green Day used it in their concerts (p.14-15).”  On balance, the court decides that the second factor “slightly” favours Seltzer.

3. Amount and substantiality of the portion used in relation to the copyrighted work as a whole.

It is taken as a matter of logic that the less of a work copied, the more likely the copying will be seen as fair. However, courts are increasingly cognizant that copying is to be examined under both qualitative and quantitative assessment. Here the unavoidable starting point is, “Green Day copied most of Scream Icon, both quantitatively and qualitatively (p.15).” But O’Scannlain continues:

“However, unlike an episode of the Ed Sullivan show or a book manuscript, Scream Icon is not meaningfully divisible. … [T]he use of the entire work was necessary to achieve Green Day’s ‘new expression, meaning or message.’”

He concludes the third factor examination with “this factor does not weigh against Green Day.”

4. Effect of the use upon the potential market

In the past, this factor has led to a stunting of fair use (largely because of the flawed view that any use was a licensable use and thus a denial of market). Fortunately, American courts have progressed in their fair use doctrine. Closer attention is paid to the actual market enjoyed by the original creator, and the question raised is whether the newer use serves a different market function?  With this more logical directive, outright piracy where duplicate copies serve the same market cannot be sheltered as fair use (nor should they be) but newer uses of work are given a fairer hearing.

On this factor, O’Scannlain writes:

The original [work] created six years before Green Day’s use, was primarily intended as street art. Green Day’s allegedly infringing use, on the other hand, was never placed on merchandise, albums, or promotional material and was used for only one song in the middle of a three hour touring show. In this context, there is no reasonable argument that conduct of the sort engaged in by Green Day is a substitute for the primary market for Seltzer’s art (p.16).

Curiously though, the documents from both the district and appeals courts indicate that Seltzer had already  licensed Scream Icon for use in a music video. But, he did not provide any information about those terms, or how the work was used by the licensing band. As O’Scannlain points out, the first and fourth factors “dominate case law (p.17)”; why did Seltzer’s counsel not emphasize this point and provide more information? O’Scannlain concludes the analysis by saying “Without further context, this fact does not suffice to show that Green Day’s use harmed any existing market or a market that Seltzer was likely to develop. Thus, this factor weighs in Green Day’s favor as well (p.17).”

And so Fair Use was the outcome. The only bright spot for Seltzer was the appeals court’s decision to overturn the lower court’s insistence that Seltzer was liable for the legal fees of Green Day.

However, discussion should not stop here. From both courts’ examination of the case, it is evident that what bothered Seltzer was precisely the manner by which his work had been transformed. O’Scannlain notes:

At Seltzer’s deposition, he repeatedly testified that the value of his work was unchanged, but that he subjectively did not care for Green Day’s use of his art. He admitted that no one had ever told him that he would not buy his work as a result of Green Day’s use; instead, he claimed that Scream Icon was “tarnished” for him personally… (p.16).

The district court decision gives more detail on this matter; in his deposition Seltzer states that the use made by Staub and Green Day:

… [T]ainted the original message of the image and [ ] made it now synonymous with lyrics, a video, and concert tour that it was not originally intended to be used with….. I make an image, I produce it, I tailor it to my needs, the concept, the content, and then someone comes along, defaces the image, puts a red cross on it. I mean, maliciously devalues the original intent and then shows it to thousands upon thousands of people (p.6).

In the eyes of both courts  Seltzer’s own remarks confirmed the transformative requirement necessary to a successful claim of fair use yet both courts seemed unable to factor in his concerns of artistic integrity.

The difficulty here is that Seltzer’s discomfort is not that of copyright infringement, it is moral rights infringement. These are rights that take ancestry from droits moreaux which means personal or intellectual rights.  To be sure, moral rights are no panacea of clarity, but it is worthy to recognize the emotional connection a person has to his or her work and reputation.

But the United States does not openly observe moral rights; it concedes such personal desires only through the Visual Artists Rights Act (VARA) which addresses: “a restricted category of visual artworks, extends only limited rights, and is subject to loopholes, exclusions, and waiver provisions that substantially erode its powers.”

This leaves most American creators without useful recourse in terms of the law.

One cannot argue that the fair use analysis by the courts was mishandled — it was not.  And yet, the case leaves an unsavoury air in its wake.  The disparity in stature between the parties is glaring. To a reasonable observer, it seems odd that a band who (according to the press coverage and an extensive Wikipedia entry) has sold over 70 million albums worldwide and expanded its presence through musical productions, documentary, and art-shows, could not summon the courtesy to contact the up-and-coming artist and discuss using the work? It is a matter of record that Seltzer “used Scream Icon to identify himself and his work’s presence by placing it on advertisements for his gallery appearances (p.5);”  it seems plausible that Seltzer could have been found.  It is also a matter of record that once he became aware of the use, Seltzer contacted Green Day to  “work out a resolution to this issue (p.7).”  If Seltzer had been presented with an option to license, or perhaps even recognition as the artist of the original work, he may have felt comfortable with the alterations.

The absence of courtesy becomes even more puzzling in light of Green Day’s declared affinity to street artists; showcasing the artworks created for the songs of 21st Century Breakdown at an art exhibition in 2009, musician Billie Joe Armstrong is quoted as saying: “Many of the artists… show their work on the street, and we feel a strong connection to that type of creative expression.”

My sense of puzzlement is answered in part by Sarmiento; he reminds us that the art world can equally fall prey to a weakness of  liberal ideology: “property ownership is ‘bad’ until you have enough financial resources to create and own any kind of property, tangible and intangible.”

But given that courtesy may not be forthcoming from individuals, it is all the more important that courts give consideration to the matter. Regrettably, the inelasticity of the American four-factor analysis does not appear to permit such discussion. Whereas in Canada, when the multi-factor analysis for fairness of use appeared, our Supreme Court Justices were careful to emphasize that the proposed questions were not exhaustive.  Different situations may require different questions (CCH Canadian, para. 60).

Matters of good faith and courtesy are worth discussing.

Update — August 16, 2013  Marc Belliveau of Stewart McKelvey provides the “what if the case had been tried in Canada” analysis; see here.

fair use of Faulkner

In Case Reviews on July 20, 2013 at 9:06 am

A story in circulation yesterday concerned a claim of infringement over the use of nine words in a film. (See Dave Itzkoff of the New York Times here, Holbrook Mohr writing for AP through the Times Colonist here, and Ted Johnson writing for Variety here). The literary estate of William Faulkner objected to the inclusion of Faulkner’s wording from Requiem for a Nun (1950): “The past is never dead. It’s not even past.” Woody Allan, in Midnight in Paris (2011), has a character proclaim: “The past is not dead. Actually, it’s not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.”

Fair use called out, loud and clear. It is almost beyond belief that the estate thought this case could be won (more on that below). Judge Michael P. Mills, of the Northern District of Mississippi, states the issue and his decision at the outset:

At issue in this case is whether a single line from a full-length novel singly paraphrased and attributed to the original author in a full-length Hollywood film can be considered a copyright infringement. In this case, it cannot.

Making it clear that the estate had provided little in the way of argument, Mills nevertheless considers if fair use is applicable and then proceeds with a fair use analysis. (I avoid most specific details but — spoiler alert — the opinion tells all.)

After accepting evidence that Faulkner’s work is still under copyright, Mills explains that a charge of infringement rests on “substantial similarity,” which “is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole.” Beginning with the statutory language of fair use and its four-factor analysis as given in 17 U.S.C. § 107, Mills reminds us that fair use has been defined as: “a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.” Then he unveils his analysis.

(i) Purpose and character of the use.  This determines whether the later work moves forward from the original work, “… with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is transformative.” Comparing Faulkner’s book to Allen’s movie, Mills is explicit in the dissimilarity of the two uses of the nine words. The time, setting and characters are not at all the same, and the intent of the wording conveys an entirely different argument: “On one hand is a serious attempt to save someone from the death penalty, and on the other is a fiancé trying to get a leg up in a fleeting domestic dispute.” The shift in genre and medium (serious literature to romantic comedy, book to film) coupled with the “miniscule  amount borrowed” essentially decides the case. The transformative element is so great as to “[diminish] the significance of considerations such as commercial use that would tip to the detriment of fair use.”

(ii) Nature of the copyrighted work.  Faulkner’s estate attempted to resist the applicability of fair use to excerpts from the book, on grounds that a precedent setting case (Campbell v. Acuff-Rose Music, Inc.) had upheld fair use in application to parody but Allen’s movie was not a parody of Faulkner’s book. Mills is not distracted by the misdirection: “The court declines to determine whether or not [the movie's] use constitutes a parody because it has found the work to be highly transformative under the first factor, whether parody or not.”

(iii) Amount and substantiality of the portion used in relation to the copyrighted work as a whole.  Faulkner’s estate had argued that while the work was not quantitatively significant, the use was infringement because of the qualitative nature of the wording: “[it] describes the essence of [the book].” Mills does not agree, saying that the argument addressed the qualitative merit of a theme, not the expression of the theme. Themes, like ideas, are not copyrightable–only their expressions are. In this case, expressions of the theme occur several times throughout the book and thus the copied words represented only “a fragment of the idea’s expression.” Mills then adds this gem: “This analysis is not influenced by the quote’s subsequent fame as a succinct expression of the theme. Qualitative importance to society of a nine-word quote is not the same as qualitative importance to the originating work as a whole.”

(iv) Effect of the use upon the potential market.  Mills indicates that in light of analysis of the first factor, this is moot. Mills could have stopped there but goes on to say:

The court is highly doubtful that any relevant markets have been harmed by the use in [the film]. How Hollywood’s flattering and artful use of literary allusion is a point of litigation, not celebration, is beyond this court’s comprehension. The court, in its appreciation for both William Faulkner as well as the homage paid him in Woody Allen’s film, is more likely to suppose that the film indeed helped the plaintiff and the market value of [the book] if it had any effect at all.

And now this gets interesting. Mills writes that the estate had anticipated providing evidence that it usually licenses Faulkner’s content and that Allen’s use of the nine words would “adversely impact [the estate's] ability to exploit for its financial benefit its property rights [in the book].” Mills response is unsympathetic: “The court is doubtful that any discovery to this effect will prove fruitful since the court does not consider a copyright holder to be entitled to licensing fees for fair use of his or her work.”

The estate had also attempted to argue that since other copyrighted material had been licensed for use in the film, the same treatment should apply. Mills is not impressed here either:

This court’s inquiry is whether the use of Faulkner’s quote is fair use, not whether the rest of the work used in the film would have required a license agreement. Such considerations would require several detailed inquiries into the fair use of several other works. The court notes the obvious distinction between the use of Cole Porter and Pablo Picasso’s work at the outset, however: they are used in their entirety while [Faulkner's work] is by fragment only. Thus, the court finds this consideration to be irrelevant.

All in all, the estate’s claim rested not upon the law, but on the expectation of achieving a license. And this was not an isolated event.

Last fall, when the estate began legal action against Midnight in Paris, it also began proceedings against Northrop Grumman (a defense contractor) for its use of Faulkner’s work. The company had used fourteen words from Faulkner’s article titled “On Fear” (published in Harper’s in 1956). The wording (“we must be free not because we claim freedom, but because we practice it”) was attributed to Faulkner and appeared in a Fourth of July advertisement on the company’s web page. At the time, Alison Flood writing for The Guardian gave more details of “On Fear”; it is a reflection on the aftermath of a U.S. Supreme Court decision ordering the desegregation of schools.

While the unauthorized association of Faulkner to a defense contractor might be unpalatable to the estate, that is a claim of moral rights infringement, not copyright. (This is problematic for Americans as the United States does not observe moral rights in the manner that many other countries do.) The context and details of Northrop Grumman’s use are different but the behavior of the estate again smacks of rent-seeking. On that occasion, the estate seemed to get what it wanted; the dispute was privately settled with no details released.  Randi W. Singer and Olivia J. Greer covered this story for Intellectual Property Magazine in February 2013.

Canadians may be pleased to know that all of Faulkner’s published texts entered our life+fifty public domain on January 1, 2013.  In jurisdictions of lengthier term, they remain under lock and key, save for fair use and fair dealing.

A glimpse into the life of William Faulkner (1897-1962); Nobel laureate (1949)

In 1956 The Paris Review published an interview with Faulkner. Conducted by Jean Stein, early in their conversation she asks for Faulkner’s views of himself as a writer:

If I had not existed, someone else would have written me, Hemingway, Dostoyevsky, all of us. Proof of that is that there are about three candidates for the authorship of Shakespeare’s plays. But what is important is Hamlet and A Midsummer Night’s Dream, not who wrote them, but that somebody did. The artist is of no importance. Only what he creates is important, since there is nothing new to be said. Shakespeare, Balzac, Homer have all written about the same things, and if they had lived one thousand or two thousand years longer, the publishers wouldn’t have needed anyone since.

Race relations and civil rights were prominent in Faulkner’s stories and his life.  In light of what is happening in the United States today, readers may be interested in this passage from On Fear:

If the facts as stated in the Look magazine account of the Till affair are correct, this remains: two adults, armed, in the dark, kidnap a fourteen-year-old boy and take him away to frighten him. Instead of which, the fourteen-year-old boy not only refuses to be frightened, but, unarmed, alone, in the dark, so frightens the two armed adults that they must destroy him…. What are we Mississippians afraid of?

summer’s end

In Posts on August 23, 2011 at 9:01 am

These last few months have been eventful with institutions lining up to drop their Access Copyright licenses. This does not imply that copyright-holders will not be paid for their works. It simply means that blanket-licensing has outlived its usefulness in light of the choices institutions now have regarding paid access to creative materials. Competition in the marketplace is only good for creators and consumers alike. Yet the arena of the non-market – that realm of access offered by fair dealing – may come off poorer for this experience.

As a consequence of the shift in business models, post-secondary institutions are paying more attention to copyright and fair dealing. This ought to be a positive step forward. Yet as events have come about, fair dealing has been compromised before it could root itself firmly in the post-secondary psyche. The dialogue has been predicated upon the very narrow interpretation presented by Access Copyright and supported by the Association of Universities and Colleges of Canada. Best practices are not to be confused with a set of rules – best practices are instruments of thought. They should encourage individuals to first understand the culture of fair dealing and then proceed to a multi-facetted examination of the facts surrounding any instance of copying. Instead of cultivating an atmosphere of best practices with fair dealing, current guidelines represent a ceiling on fair dealing.

Seven years ago, the Supreme Court of Canada offered an engraved invitation to the academic community to have a productive conversation on fair dealing. That was an opportunity to discuss the measure without the tensions provoked by impending copyright amendment or licensing negotiations. Unfortunately, by and large, Canadian academia sent in their regrets. That missed opportunity was costly; now post-secondary institutions are starting their fair dealing dialogue from a defensive posture, speaking more about what fair dealing is not, rather than what it is.

But, the good news is that individual members of the academic community – students, teachers and librarians – continue to educate themselves about the nuances associated to fair dealing. To that end, fair use needs more attention. CCH Canadian brought Canada very close to fair use. While we lack fair use’s flexibility in the type of use protected, we have acquired its form of inquiry.

Fair use entered American jurisprudence in 1841, in Folsom v. Marsh. The case concerned two competing biographies of George Washington. The first work was a twelve-volume compilation spanning nearly seven thousand pages. Volume One was a biography written by the editor, Jared Sparks; Washington’s letters and memoranda (augmented by the occasional editorial remark) made up the remaining eleven volumes. The offending work was written by Reverend Charles Upham. His biography was an autobiography; written in Washington’s voice with selected letters used to illustrate the life-story. Interestingly, the Upham biography is said to be largely taken from Sparks’ work – yet this did not provoke the charge of infringement. The complaint was the inclusion of Washington’s letters. Upham’s work is much smaller, less than nine hundred pages in two volumes. From the closing remarks of the presiding judge, Justice Story, the work appears to have been intended for the market of school libraries.

In his opening paragraph, Justice Story wrote: “Patents and copyrights approach … what may be called the metaphysics of the law, where the distinctions are, or at least may be, very subtle and refined, and, sometimes, almost evanescent. ” As he worked through the details of the dispute, Justice Story opined what would later become the four factors of fair use as codified in American law in 1976:

In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.

At this time, in the system of copyright as a whole, fair use sits as a vital component. It allows the law to address the unknown. No government can foresee what combination of input materials, what modes of access, and how much sheer determination will be needed to foster the arts and sciences. Copyright law must remain flexible. Fair use carries that flexibility. But fair use is – truth be told – itself an artificial constraint on what previously was a more permissive creative atmosphere.

In 1998 Lyman Ray Patterson, a highly respected scholar, described the outcome of Folsom v. Marsh as “The Worst Intellectual Property Opinion Ever Written.”  He sets the stage in his introduction:

If one of the characteristics of a bad legal decision is that it gives rise to a myth as to what the court in fact ruled, Folsom is at the top of the list. The myth is twofold. The first myth is that Folsom created fair use, when in fact it merely redefined infringement. The second myth is that Folsom diminished, and therefore fair use diminishes, the rights of the copyright owner. In fact, the case enlarged those rights beyond what arguably Congress could do in light of the limitations on its copyright power and, indeed, fair use today continues to be an engine for expanding the copyright monopoly.

[Keep in mind the date of this publication: 1998.]

Professor Patterson gives a detailed explanation for his displeasure; he explains how, by the hands of the U.S. Congress and judiciary, fair use has been accepted as a natural right that protects the monopoly offered through the statutory right of copyright.  Folsom v. Marsh addressed a dispute between competing authors, in the arena of professional publication. Yet. by the late twentieth century, personal use had come to be governed by those same factors. He writes:

To use a copyrighted work a person must fulfill certain requirements to avoid infringing the work. Perhaps this makes sense when a competing author is making use of another’s work; but it makes a mockery of the constitutional purpose of copyright – the promotion of learning when an individual is using a copy of the work for study, research, or scholarship.

The timing of this paper was not accidental. Professor Patterson makes reference to some key copyright decisions of that decade, including American Geophysical Union v. Texaco Inc. (1996) and Princeton University Press v. Michigan Document Services Inc. (1994). In the former, a research department had copied articles for reference purposes; in the latter, the issue was coursepacks assembled at the request of professors. In both cases fair use was denied and both analyses rested strongly on the issue of the commercial impact to the copyright holder. The courts decided that the presence of a licensing system precluded fair use. Such reasoning rendered fair use quite useless as one can always argue that a use could have been paid for. The more critical issue is should it be paid for?

Fortunately, American courts have moved beyond such circular reasoning. We are in the happy position of escaping such illogical thought; in CCH Canadian, the Supreme Court took care to ensure that future Canadian courts will not over-emphasize the element of commerciality.

As I was writing this, Jesse Hirsh commented on the issue of copyright in the post-secondary world. (See CBC’s Early Edition, August 23, 2011, at approximately 5:55am). He spoke approvingly of Access Copyright as the means to ensure payment to authors and, in his view, indicated that universities are choosing to disobey copyright in favour of the ease of access provided by technology. Frustrating as it is to hear that, one cannot be surprised. And while Mr. Hirsch may be unaware that Access Copyright has mishandled relationships not just with universities but also with their own clients (authors), and also unaware that universities are still pursuing other payment options to copyright holders, he made a critical point: students take their cues from their teachers. The attitudes to copyright displayed in the classroom will shape behaviour outside of the academy.

fair use and a would-be scrapbook

In Posts on July 24, 2011 at 10:10 pm

A recent post from Jesse Brown caught my eye; something about Céline Dion banning the content of a website titled Ridiculous Pictures of Céline Dion. As reported, the proprietor of the website was instructed by Ms. Dion’s lawyers to remove the pictures. Compliance followed, although the proprietor claimed that his use was fair use.

Without knowing the wording of the actual complaint, and being unable to see the content, it is difficult to assess the situation. However, since the proprietor of the site has claimed fair use, I assume that Ms. Dion’s lawyers were claiming copyright infringement. In which case, they would have to confirm (or at least assert) that Ms. Dion owned the copyright of all the content used and that she had not authorized such use.

Coverage of the story from the Guardian did not address the issue of who held the copyrights and describes the site as something parodic. But the Winnipeg Free Press gives more detail as to the source of the materials and the manner in which the website proprietor used them:

The blog had images and videos of Dion that Angiolillo found online through Google searching. The images spanned several decades of her career and highlighted everything from her fashion choices to her costumes and funny facial expressions. Angiolillo also provided commentary or edited the images for comedic effect.

This suggests that some of the copyrights under question may not have been held by Ms. Dion – some of the material may have been created by third-party sources. At best, the legal team could only request removal of Ms. Dion’s holdings. In any case, with respect to all the material, fair use may apply.

However, Mr. Angiolillo stated that he didn’t have the wherewithal to engage a lawyer to speak on his behalf. [Note: by the time I posted this entry, his remarks had been removed.]

The removal of the material may be for the best. The legal team of a pop-culture superstar could make anyone’s life miserable. However, the collection sounds like a digital-age version of a scrapbook. Collecting memorabilia is not a new practice, neither is displaying it to interested friends. That such a community could exist on a larger scale is part and parcel of our contemporary networked society. In the absence of a formal legal analysis of the applicability of fair use, and without having seen the collection, this story lends itself to a “what if” exploration.

Literature on fair use abounds but for this speculative exercise I turn to a work by internationally renowned legal scholar, Pamela Samuelson. In Unbundling Fair Uses, Professor Samuelson conducted a qualitative examination of fair use caselaw, organizing her analyses by way “policy-relevant clusters.” She writes:

Policy-relevant clustering is not a substitute for appropriate consideration of the statutory fair use factors, but it provides another dimension to fair use analysis that complements the four-factor analysis and sharpens awareness about how the statutory factors, sometimes supplemented by other factors, should be analyzed in particular contexts.

While fan-based work is not a defined cluster within the article, Section II deals with “Authorship-Promoting Fair Uses”. It includes social and critical commentary, and provides some insight as to this situation. And the article in its entirety offers much reassurance as to the viability of fair use.

In any event, analysis of fair use has a pattern.

First, establish the language of fair use as it exists today and include the factors listed for determining fair use. Section 107 of Title 17 of the United States Code states:

Notwithstanding the provisions of sections 106 and 106A the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

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.

Then proceed with the four-factor analysis. The first task is to consider the purpose and character of the work. The site in question (as I understand it) was a noncommercial, personal undertaking. The content included many representations of Ms. Dion’s public persona and chronicles her rise to stardom. The site can ascribe to itself the persona of a scrapbook — created by a fan and to be enjoyed with other fans.

The compilation could carry historical value; it serves as a repository of imagery of a popular cultural phenomenon. And, the compilation maintains a creative value;  it perpetuates the practice of scrapbooking beyond the confines of any particular media.

Moreover, the compilation was not just a passive reproduction of prior works. As reported by the Winnipeg Free Press: “Angiolillo also provided commentary or edited the images for comedic effect. He said he started the blog several months ago because he loves Dion.”

This suggests a modestly transformative effort; commentary places the imagery in context and better serves the historical record. Transformative works have often been looked upon with greater favour in disputes of fair use.  And while the comedic elements may not resonate with everyone, in the genre of scrapbooking such additions carry a playful mood that is very much a part of the custom.

As Professor Samuelson writes:

It was common to take custom into account in fair use cases prior to the 1976 Act; there is nothing in the legislative history of this Act that repudiates custom as a factor. Its resurrection as part of purpose analysis would be a sound development since copyright law should accommodate practices that contribute to the availability of new works of authorship.

[Note: Prof. Samuelson is indicating that this would be a positive development on the part of the Courts, not necessarily as Courts in the United States function today. Interestingly though, the Supreme Court of Canada has already placed custom as a point of exploration in analysis of fair dealing.]

A challenge for Mr. Angiolillo to overcome is the very name of his site – it could be construed as having malicious intent. The article by the Guardian supports that interpretation.  This will not help in the claim of fairness; however, Mr. Angiolillo explained his intention to the Winnipeg Free Press:

There were some sour people who thought it was made to mock her, but I and most of the fans never saw it that way. If you’ve seen Celine’s documentary ‘Celine: Through the Eyes of the World’ you would know she has a great sense of humor and is always the first one to laugh at herself. The blog never once slandered or implied anything negative about Celine.

Of course, without comment from Ms. Dion herself, it remains an open question if she was comfortable with the collection. At this stage, we can only assume that the collection lived up to Mr. Angiolillo’s description.

Continuing with the four-factor analysis, consider the nature of the copyrighted work. As the material was derived from Google, it seems evident that the images and videos were already present in publicly available sites. If those sites were created as part of Ms. Dion’s publicity effort, it can be argued that Ms. Dion’ s legal team had implicitly authorized the works for use in a manner consistent with the expected behaviour that accompanies Internet access. Meaning to say, people will copy, edit, and save the material.

If the sources of the material were from unauthorized sites, Ms. Dion has greater recourse to complain of their use, but this in and of itself is not sufficient to deny fair use. No further comment can be made on this point unless one is familiar with the source material. (But, generally speaking, fair use may not hold when material is fraudulently obtained, resides in a private collection, or might be considered something akin to a trade secret. )

Some may feel fair use will suffer on the third factor, that of the amount and substantiality. Typically, the less one takes of a copyrighted work the stronger the argument for fair use. But again, this condition has to be set against the context of use. Popular culture is rife with imagery and sound. Arguably, one cannot reproduce a portion of a picture or song and still convey the full meaning or effect of the entire work. A scrapbook is not a work of literature that builds upon the past, the very intention of a scrapbook is to memorialize the past. Reproduction of whole works is desirable to this objective.

The last factor, concerning the effect on the market, could be seen as a deterrent to fair use. A popular misconception of fair use is that the commercial element takes precedence over all else. (As I have written elsewhere, Prof. Samuelson’s work, and earlier work by Prof. Barton Beebe, clarifies this element.) The challenge for creators is the language of “potential market”. Some copyright holders will insist that any use is a potential market and therefore an unfair use.  (Fortunately, again, the Supreme Court of Canada has positioned Canada to avoid this circular argument.)

Attorney Fred von Lohmann, in his work Fair Use as Innovation Policy, makes a cogent point:

Copyright law has never given copyright owners complete control over their works … Copyright law strives to strike a balance between creating adequate (not maximal) incentives for the creation and distribution of expressive works, while also ensuring widespread public access to and enjoyment of such works.

It seems unlikely that Ms. Dion had created a humorous collection of her own images for sale and lost an existing market to Mr. Angiolli. But might she have wished to create such a scrapbook for commercial purposes? Did Mr. Angiolillo’s site impede her future income? Even in that scenario, is it reasonable to prioritize those potential losses against the public enjoyment of Mr. Angiolli’s site? The very popularity that gained Ms. Dion such fame and fortune lead to the creation of the  fan site. Popular culture feeds on itself; in the interests of promoting the musical industry or any pop-culture related industry, should a court intrude on the relationships that develop between artists and audiences?

Which leads to an entirely different question: Did Ms. Dion even care about the site?

Mr. Angiolillo seemed confident that he had not caused offense; he said: “… she has a great sense of humor and is always the first one to laugh at herself.” That may not be sufficient; poking fun at oneself is quite different from having others do it for you. But in any event, the opinion of the copyright holder is relevant. Was Ms. Dion aware of the action taken in her name? Did she support that action? Ms. Dion may have enjoyed the site, or, may not have wished to harass a fan. While the four-factor analysis has been coded into American law, more than four questions can be asked.

Fair use exists explicitly to allow the use of copyrighted material (under American law) in a manner that supports the constitutional purpose of copyright. Quoting from the U.S. Supreme Court, Professor Samuelson writes: Fair use “‘permits . . . courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.’” Creativity will take many shapes and forms, each designed to appeal to audiences of differing tastes. Fair use is capable of facilitating this range of challenge.


Fair Use – the essential innovation

In Posts on May 12, 2011 at 10:12 am

I usually focus on the creative development possible through fair dealing or fair use; those downstream uses of copyrighted work that facilitate research and learning, or, transformative uses that produce new works. However, there is another element of individual use that deserves attention. The arguably legitimate activities of time and format shifting carried out through private copying. We should not forget that economic prosperity, on a national scale, can be facilitated through these individual activities.

Last week I drew attention to the work of Consumers International (CI); I noted that their current IP Watchlist indicates that Malaysia, Japan, and the United Kingdom are considering implementing fair use within their domestic copyright laws. In a separate report, Access to Knowledge for Consumers – Reports of Campaigns and Research 2008-2010, is a chapter concerning Israeli copyright law and its implementation of fair use in 2007. The chapter, written by Dr. Nimrod Kozlovski, Jonathan J. Klinger, Uria Yarkoni and Nati Davidi, gives an apt summary of the history of Israeli copyright law and related ongoing activity.

The authors position fair use as part and parcel of Israel’s innovative potential. The advantage of protecting consumer rights is that individuals have the certainty to engage in business with others with productive gain for all:

We can see that in a series of cases, the Israeli courts favoured the free markets and competition over property rights, with the understanding that as innovation comes, there will be more welfare (p.177).

In terms of Israel’s progress, fair use is considered essential to achieve free markets and free competition.

This is a perspective that Ireland is now willing to consider. As was reported by John Kennedy on May 9, 2011, the Department of Enterprise, Trade and Innovation is seeking submissions concerning copyright. According to the department’s website:

There is a perception in certain industries that national copyright legislation does not cater well for the digital environment and actually creates barriers to innovation and the development of new business models.

The terms of reference for this review of copyright include, “Examine the US style ‘fair use’ doctrine to see if it would be appropriate in an Irish/EU context.” Interestingly enough, the terms also state that if suitable changes are not possible under the current constraints of EU copyright directives, Ireland will make recommendations for changes to those EU directives.

The United States is the foremost example of the creative development that can be fostered by maintaining flexible limits on copyright’s mandate. A point exemplified and emphasized by Google; two years ago the company called on the U.K. government to adopt fair use, and, two months ago followed it up by giving that same government a submission detailing the importance of fair use:

[Fair Use’s] flexibility has enabled it to protect both creative cultural output, such as parody or news commentary, and technological innovation built on digital copying. … Fair use is regularly referred to as the key tool by which the US fosters innovation … And the proof is in the pudding: no country in the world can compete with the U.S. for the most innovative search technologies, social networks, video and music hosting platform, and for the sheer generation of the most jobs and wealth in the Internet domain. If one is looking for evidence of how innovation succeeds, the best way is to look at those places where innovation has succeeded (see Section 4.2).

A more in-depth analysis of fair use as a catalyst for American innovation can be found in Fair Use As Innovation Policy (2008), by Fred von Lohmann (Senior Intellectual Property Attorney with the Electronic Frontier Foundation (EFF) and Lecturer at Stanford Law School.) He observes that the more noble aspects of unauthorized use of copyrighted material are easily and often defended – i.e., fair use preserves freedom of expression and fair use upholds the time-honoured process of creating something new by building on something old. But Lohmann focuses on the act of private copying with the reminder that until 1998 the U.S. followed a mantra of “innovate broadly first, regulate narrowly later (p.25)”. Those innovations took form in popular consumer technologies which depended on the legitimacy of allowing individuals to engage in private copying. Lohmann concludes: “From this observation grows the corollary that the fair use doctrine may well be playing an increasingly critical role in U.S. innovation policy (p.36).”

(And to naysayers who will complain that fair use is thus a subsidy to the high-tech sector paid for by content providers, Lohmann gives an extensive four-part rebuttal.)

It seems likely that the Federal Government of Canada will reintroduce Bill C-32 in the near future. Much has been made of the fact that Canadian copyright law has not been significantly altered since 1997. Rather than implementing measures deemed suitable for 1998, perhaps the government will look forward and position Canada as an early adopter of a proven digital economy catalyst. All that is needed is a little unshackled, innovative thinking.

A better list

In Posts on May 6, 2011 at 7:28 am

Earlier this week Michael Geist reported that Canada continues its residency on the Special 301 Priority Watch List. This annual report issued by the Office of the United States Trade Representative (USTR) is an assessment of trading partners whose approach to intellectual property rights do not mirror those of vested American interests.**

Mercifully, a better list recently appeared from Consumers International. This global alliance of 220 consumer groups takes as its lodestar “to put the rights of consumers at the heart of decision making.” Founded in 1960, Consumers International expands its ambit to meet the changing face of consumer industries. The IP Watchlist, “assesses the fairness of the world’s intellectual property laws and enforcement practices from an important yet under-represented perspective: that of the ordinary consumer.” The first IP Watchlist was published in 2009. All yearly reports, and the 2011 individual surveys of participating countries, are freely available from the Access To Knowledge network of Consumers International.

Canada was first assessed in 2010 and received a C. The 2011 report shows a modest improvement; Canada is now rated as B-. Moreover, the report positioned Canada at the forefront of enhancing consumer creativity through Bill C-32:

The explosion of creativity from ordinary consumers commenting and building upon works from pop culture, and freely sharing their creations with the world, has been one of the defining cultural phenomena of this century… So, does copyright law support the participation of consumers in this new democratic art form? The answer, regrettably, is a resounding ‘no’, with only a handful of countries offering any consumers any legal protection. There are, however, early signs that this is beginning to be seen as a legal anachronism. In particular, a new provision proposed for Canadian law would legalise the creation of noncommercial derivative works that do not financially damage the original copyright owner.

Each year Consumers International identify the best and worst practices in the application of copyright laws. In the inaugural 2009 issue, technological protection measures (TPMs) were the first point of discussion:

When copyright material is protected by a TPM, no judge – in fact, no human being at all – determines whether or not the restrictions enforced by the TPM conform to copyright law. [Even if the purpose is for fair dealing] … in many countries the consumer cannot circumvent that restriction without breaking the law.

Despite being a leader in promoting TPMs, by virtue of its inclusion of fair use, the United States faired well in the first report:

The main reason why the United States is placed highly in the IP Watch List as a country that supports the interests of consumers is that its copyright law includes a broad exception for the “fair use” of copyright material. In most other jurisdictions, piecemeal exceptions exist for the use of copyright material for particular purposes such as research, criticism and reporting current news. In contrast, a broad fair use exception allows copyright material to be used for any purpose, so long as it satisfies a balancing test that includes factors such as whether the use is commercial or non-commercial, and its effect on the market for the copyrighted work.

Fair use was the first item of discussion in the 2010 best practices, with another favourable review of American law. A particular concern was addressed – does fair use comply with international law? Implicitly this means that exceptions to copyright must meet the “three-step test” laid out in the Berne Convention. Exceptions must (i) be confined to specific cases; (ii) not conflict with the normal exploitation of a work; and (iii) not unreasonably prejudice the legitimate interests of a copyright holder. CI wrote:

Most countries have implemented the three-step test by enacting … exceptions for specific purposes or specific classes of consumer, such as the educational, library and disability exceptions … But there is an alternative approach, first and most famously found in the copyright law of the United States, which stretches the three-step test almost to its limit. It allows for any use of a copyrighted work that can be described as ‘fair’, considering the purpose and character of the use, the nature of the work, the amount and substantiality of the portion used, and the effect of the use upon the potential market for or value of the work. There are many uses of copyright materials that are allowed under US law as ‘fair use’, that would not be allowed under the more specific exceptions of other countries.

In the 2011 report, CI once again speaks approvingly of fair use and suggests that more countries will follow in these (positive) American footsteps:

Malaysia, Japan and the United Kingdom are also reviewing their respective copyright laws, and considering the merits of adding broad US-style ‘fair use’ rights. This is an overdue trend that Consumers International strongly welcomes.

** Note: The curiously-named International Intellectual Property Alliance (IIPA) is a regular contributor of input to the USTR. The IIPA was not impressed with Bill C-32; their recommendation of Canada for 301 inclusion can be found here.

Special to July 4th

In Posts on July 4, 2010 at 1:58 pm

For the last few months I was immersed in readings about Fair Use, hence last week’s reference to William Patry’s work. Today seems a good day to describe some of the thinking that went into codifying what eventually became Section 107 (Fair Use) within American copyright law.

In 1955, Congress began preparation for general revision of their copyright law (dated to 1909). Congress authorized a set of studies (thirty five were eventually completed and circulated) to investigate the problems related to copyright revision. Patry describes Study #14: Fair Use of Copyrighted Works (1958), by Alan Latman. Latman provided a comprehensive review of the theoretical bases for fair use together with case law, and went so far as to consider relevant foreign laws. He presented various options, including whether the provision should be introduced into statutory law and if so, should the doctrine be represented in general terms, with specific criteria, or address specific situations?

Nine copyright experts reviewed the Latman study with eight of the opinion that fair use should not be statutorily recognized. Patry writes:

Typical of the comments was that of Walter Derenberg: “I believe–and the Latman study seems to bear this out–that the term ‘fair use’ defies definition and that in the long run more would be accomplished if our courts would be entrusted with setting the outer limits of the doctrine as they have been under the Act of 1909.” (p.262).

Fast forwarding ahead, it was not until 1976 that the new copyright law was passed, and 1978 before it took effect. The Congressional reports of the day emphasize that the statutory recognition of of fair use was to “restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in anyway (quoted in Patry, p.414).” And the ‘judicial doctrine’ of the day, was predicated upon a multi-factor inquiry.

The final language of Section 107 emphasizes flexibility; it begins as:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include [the multiple factors of inquiry**]

The bolding is my own addition. Patry writes that the terms “including” and “such as” are defined within U.S. law as “illustrative and not limitative.” A legislative report of the day identifies that the flexibility was deliberate:

The bill endorses the purpose and general scope of the judicial doctrine of fair use, but there is no disposition to free the doctrine in the statute, especially during a period of rapid technological change (quoted in Patry, p.415).

What makes this period of history addedly interesting is that the deliberations about fair use were shaped by the advent of the photocopier.

** The multiple factors of inquiry have spawned legions of scholarship and debate … more to come another day.

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