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 Scrooge McDuck 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 Scrooge McDuck 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 Scrooge McDuck.) 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 Scrooge McDuck 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 Scrooge McDuck 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, Scrooge McDuck’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.
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.