Category Archives: Fair Use

‘Oh’ No You Don’t!

Jay Z won a motion to dismiss a copyright infringement case alleging that his alleged sampling and use of the word “oh” in an audio recording and music video entitled Run This Town. Jay Z allegedly sampled the recorded “oh” from the recording Hook &Sling Part I Eddie Bo and the Soul Finders. The “oh” in question appears once in Hook & Sling but allegedly appears 42 times in Run This Town. In a direct refutation of the Bridgeport Music case from the 6th Circuit, the SDNY court relied on 2nd Circuit precedent that distinguishes between “factual copying” and “actionable copying.” The former “requires only the fact that the infringing work copies something from the copyrighted work; the latter . . . requires that the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement . . . has occurred.” Judge Kaplan concluded that “In arguing that the Court should find qualitative significance simply because defendants have actually copied its work, plaintiff improperly conflates factual copying and actionable copying.”

Tufamerica v WB Music (Jay Z 'Oh' Copyright Infringement)

Google Books is (Rap) Genius!

Google Books and Rap Genius

Judge Denny Chin, formerly of the SDNY and now the Second Circuit, has issued his opinion in the Google Books case.  (Judge Chin kept a few of his cases when he moved up to the appeals court.).  For those unfamiliar with the case, in 2005 Google undertook to digitize entire libraries of books, scanning the entire book in optical text recognition format.  Many of the books Google scanned were under copyright and Google never sought permission from copyright owners prior to making its digital copies.  Several authors filed a purported class action suit against Google. 

After Judge Chin rejected a proposed settlement in 2011, the parties filed cross motions for summary judgment, with Google arguing that its digitization of entire books as ‘fair use’ under § 107.  Judge Chin agreed with Google and granted its summary judgment.

Because they typically are the most relevant in deciding a fair use claim, I focus on the first and last of the 4 fair use factors provided in § 107: whether the use is transformative and whether the use reduces the market for the original.  Judge Chin found both of these factors weighed in Google’s favor.

Judge Chin determined that “Google’s use of the copyrighted works is highly transformative. Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books. … The use of book text to facilitate search through the display of snippets is transformative.”  Judge Chin compared Google Books to providing thumb-nails of images, citing approvingly Perfect 10, Inc. v., Inc., 508 F.3d 1146 (9th Cir. 2007) and Bill Graham Archives v. Darling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006). 

The display of snippets of text for search is similar to the display of thumbnail images of photographs for search or small images of concert posters for reference to past events, as the snippets help users locate books and determine whether they may be of interest. Google Books thus uses words for a different purpose — it uses snippets of text to act as pointers directing users to a broad selection of books.

Judge Chin focused on the fact that Google’s scanning “transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research.” 

I wonder if Judge Chin would have made the same conclusion based on the scanning of a single book.  Or even scanning several hundred books.  It appears that his logic stems from the fact that millions of books were scanned, thereby enabling the searching that made the scanning transformative in the first place.  This is at least suggestive that massive copying might be transformative, where limited copying might not be.  As discussed below with respect to Rap Genius, I can imagine ways in which Judge Chin’s decision might influence business models that involve digitizing and indexing copyrighted works.

With respect to the last § 107 factor—the effect of the copying on the market for the original—Judge Chin concluded that “a reasonable factfinder could only find that Google Books enhances the sales of books to the benefit of copyright holders. An important factor in the success of an individual title is whether it is discovered … Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays.”  Because “Google provides convenient links to booksellers to make it easy for a reader to order a book … there can be no doubt but that Google Books improves books sales.”  I didn’t review the motions for summary judgment, so I don’t know if there was evidence (empirical or anecdotal) presented regarding Google Books actual impact of sales, but this seems like a pretty bold statement if it lacks evidentiary support.  Given that many books were on sale prior to Google Books, it seems at least some evidence could have been presented showing either an increase or decrease in sales of particular titles after the introduction of Google Books.

For those who pay attention to this kind of thing, Judge Chin was the district court judge who originally granted summary judgment in favor of the copyright owners in the Cablevision case.  Judge Chin’s decision was overturned by the Second Circuit in what became a bellwether for technology companies designing services that transmitted copyrighted works.  Judge Chin was the dissenting vote in the Aereo case, where the Second Circuit upheld the principles articulated in Cablevision.  I find it interesting that Judge Chin is so sure that services like Cablevision’s remote DVR and Aereo’s rebroadcast of over-the-air television transmissions are infringing technologies, while Google Books is not. 

The Google decision is here.

So, what does Google Books have to do with Rap Genius?  I recently read that Rap Genius has signed a license with music publisher Sony ATV.  If you’ve checked out Rap Genius, you might wonder why it felt the need to get a license from a music publisher.  I would argue it is a highly transformative service—a la Google Books.  It is a searchable database of lyrics (though, unlike Google Books, it provides the entire lyrics, whereas Google Books only provides up to 90% of a text).  But in addition to transcribing the lyrics, Rap Genius annotates the lyrics with possible explanations of what the writer meant.  Rap Genius’ annotations include space for comments, so people can provide their own thoughts regarding the meaning of their favorite rap lyrics. 

For example, check out Nas’ song “The World Is Mine.”  I’ve listened to that song 100 times, and I love this line because of the way Nas emphasizes “PIPE” at the end – “The fiend of hip-hop has got me stuck like a crack pipe.”  According to Rap Genius, this line either refers to “fans are fiending for his music, or if he himself is compelled to write rhymes.”  Rap Genius also tells me that this line is a “subtle shout out to Nas’ one time mentor, Rakim who was known as the Microphone Fiend.”  If Google Books is transformative—and all Google is doing is digitizing books—then Rap Genius should clearly be transformative—digitizing lyrics AND providing annotations.

Nas The World Is Mine

All of this got me to thinking about a draft article by Ben Depoorter & Robert Kirk Walker’s called Copyright False Positives, an electronic copy of which is available at:  Depoorter and Walker argue that (a) the scope of copyright protection cannot be determined a priori, (b) copyright infringement entails statutory damages, and (c) defending copyright infringement claims is expensive.  Because of these factors, copyright owners may over-enforce their copyrights, leading to “copyright enforcement false positives, where rights holders erroneously believe that their interests in a particular work extend beyond the bounds of what is actually protected.  These false positives often “motivate copyright owners to seek enforcement of rights that are nonexistent or outside the scope of copyright. Such misguided enforcement actions impose significant social costs…”

Two of these significant social costs are obvious in our examples.  First, in the Google Book case, Google had to spend millions of dollars litigating what a federal district judge ultimately determined was a fair use of copyrighted works.  Second, in the Rap Genius case, the website took a license rather than risk the very litigation expenses Google was able to afford, even though Rap Genius’ use of the copyrighted works is arguably transformative.  In both instances, society is worse off, but in one instance a publisher is better off.

Things You Never Thought You’d Read in a 7th Cir. Opinion: “Butters sings a paean to anal sex”

Readers will recall a previous post (here) discussing the United States District Court of the Eastern District of Wisconsin finding that Comedy Central’s use of the Samwell’s viral video entitled “What What (In the Butt)” (“WWITB”) was fair use.  The copyright owner of WWITB, Brownmark Films, appealed the decision, arguing, among other things, that an unpleaded affirmative defense of fair use is an improper basis for granting a motion to dismiss under Rule 12(b)(6).  In an opinion written by Judge Cudahy, the 7th Circuit affirmed the District Court’s ruling.

Much of the 7th Circuit’s opinion is like a First Year Civil Procedure lecture, full of discussions regarding whether Comedy Central’s filing was a 12(b)(6) motion, a 12(c) motion, or a motion of summary judgment.  In the end, the 7th Circuit determined that “district court could properly consider an affirmative defense in the context of a motion for summary judgment, which it did here, regardless of the caption [Comedy Central] used.”

Central in the 7th Circuit analysis was the fact that the only 2 pieces of evidence required by the district court to make its decision were the 2 versions of the WWITB videos, which the district court had.  In a hilarious footnote, Judge Cudahy reveals himself as an avid South Park viewer:

Adopting [a summary judgment approach] would have given [Comedy Central] greater freedom in setting out its fair-use defense.  In its reply brief, Brownmark makes much of the fact that [Comedy Central] mentions Butters’ naïveté, but had not introduced evidence on Butters’ innocent nature.  While we do not feel that this case turns on any such naïveté, [Comedy Central] could have introduced previous South Park episodes to show that Butters has repeatedly demonstrated a lack of understanding of sex. See, e.g., Butters’ Very Own Episode (Comedy Central television broadcast Dec. 12, 2001) (perceiving sex as wrestling), see also Cartman Sucks (Comedy Central television broadcast Mar. 14, 2007); Stupid Spoiled Whore Video Playset (Comedy Central television broadcast Dec. 1, 2004). Indeed, in one of these episodes, Butters is dressed in the same teddy bear costume he wears in the WWITB video. Stupid Spoiled Whore Video Playset (Comedy Central television broadcast Dec. 1, 2004).

I can imagine Judges Easterbrook and Posner scatologically discussing the import of Butters sexual innocence in the context of Saddam Hussein and Satan as gay lovers, existentialism in the repeated the death of Kenny, and whether feminists can enjoy the show due to some of its misogynistic characters.

BTW – Samwell is riding this Butt song as long and as hard as he can.  He even has an iPhone app!

The 7th Circuit’s opinion is below:
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What Can Mr. Brainwash Teach Us About Girl Talk?

Thierry Guetta, a/k/a Mr. Brainwash, is back in court for allegedly using photographs of famous musicians without authorization.  This time, however, he’s managed to drag Google into his mess.

By way of background, Guetta was sued in 2010 in the Central District of California by Gene Friedman, a photographer who took one of the most iconic photographs in hip hop, featuring Run DMC:
Guetta made several derivative works, which he commercialized on t-shirts and postcards, including:


To create the Broken Records Work, Guetta caused a digital image of the Photograph to be altered so as to remove most of the detail from its subjects, leaving an outline of the group’s features. … Guetta then had the image projected onto a large piece of wood and painted the image onto the wood.  Thereafter, Guetta glued more than 1,000 pieces of broken phonograph records onto the painted wood. The result was a three-dimensional image of Run-DMC created entirely from broken records. (Defendant’s Motion for Summary Judgment)

Guetta claimed that his derivative works were either transformative (and, therefore, fair use under § 107) or did not use copyrightable portions of Friedman’s original (and, therefore, could not constitute infringement).

In this case, the District Judge disagreed with Guetta.  Regarding the question of whether the portions of the photograph copied were copyrightable, Judge Pregerson concluded the Friedman “selected and arranged the subjects. Although the court believes that no more is
required, the court also notes that [Friedman] made related decisions about light and shadow, image clarity, depth of field, spatial relationships, and graininess that were all represented in the copyrighted Photograph. [Friedman] also selected the background
and perspective of the Photograph, and all of these particular artistic decisions commulatively result in the Photograph.”  Having found the photo copyrightable, Judge Pregerson quickly concluded that Guetta had, indeed, infringed Friedman’s copyright.

Regarding Guetta’s claim that his use was fair because the works were transformative, Judge Pregerson again disagreed, concluding that “[Guetta] has not offered a transformative alternative use of the Photograph image. Both [Friedman] and [Guetta] are artists, and the image was used by both in works of visual art for public display. Although the statements made by those respective artworks and the mediums by which those respective statements were made differ, the use itself is not so distinct as to render Defendant’s use a transformation of Plaintiff’s copyright.”

Judge Pregerson’s opinion is below.

Now, Guetta finds himself a defendant again, this time being sued by the estate of James Marshall for allegedly doing exactly the same thing with Marshall’s photographs as he did with Friedman’s; i.e., taking the photo and manipulating it to look different, while still being able to recognize the artist-subject matter. (Marshall v. Guetta, 12-cv-3423-SJO (C.D. Cal.).  So why is Google on the hook?  According to the complaint,  Google held an event to launch its music service at Guetta’s studio, where Guetta installed a backdrop using blown-up derivative works of Marshall’s photos of John Coltrane and Jimi Hendrix.

Here is a side-by-side comparison of Marshall’s original photo and Guetta’s:

The Google event at Guetta’s studio with the allegedly infringing art in the background :

And, what does all this have to do with Girl Talk?  Peter Friedman argued here that the reason mash-up artist Girl Talk has not been sued by the record labels is because the argument that Girl Talk “transformed the copyrighted materials sufficiently that his work constitutes non-infringing fair use is just too good.”  Judge Pregerson’s opinion appears to undercut such arguments.  For example, Guetta’s transformation was such that the underlying work was still identifiable (i.e., Guetta’s intent was for viewers to recognize his art as depicting Run DMC or Coltrane or Hendrix, thus capturing the essence of the original photo).  The same is obviously true for Girl Talk, who relies on listeners’ recognition of the underlying songs to make his music more popular.  Extending Pregerson’s logic, both Girl Talk and the recording artists he samples are are “artists” and though “the statements made by those respective artworks and the mediums by which those respective statements were made differ, the use itself is not so distinct as to render Defendant’s use a transformation of Plaintiff’s copyright.”

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Dollar Dollar Bill Y’All – Attorneys Fees for Winning Defendants in Fair Use Wins

In two recent cases, federal district courts awarded attorneys’ fees to defendants in copyright infringement claims who prevailed on the basis of fair use.

I think the “fair use” defense is the most over-pled defense in copyright cases.  For example, in 2010, Warner Bros. Records sued the owner of the pornographic website Reality Kings, alleging that videos shot in nightclubs and private parties featured Warner’s copyrighted music.  In some videos, the “actors” allegedly lip-synch the song or perform sexual acts that link thematically with the track (for example, Katy Perry’s “I Kissed A Girl”).  According to Reality Kings attorney Marc Randazza, Reality Kings’ unauthorized use was “fair” because when you “… film in a live night club, you’re going to absorb some of the ambient sounds.  You are going to hear what the DJ is playing, and if someone can tell me how to shoot at a nightclub and police out the music in the background, I’m all ears.” (read more here).  Sometimes, however, a defendant’s use really is fair.  And, in even rarer cases, a defendant whose use is fair gets his attorneys’ fees back.

Seltzer v. Green Day, Inc., No. 10-2103 (C.D. Cal. Nov. 17, 2011)

By way of background, on March 23, 2010, Derek Seltzer, an artist, brought suit against Green Day for using Seltzer’s work, Scream Icon, as part of a video backdrop shown during live performances of Green Day’s song East Jesus Nowhere.  On August 18, 2011, the court granted summary judgment in favor of Green Day on all claims, finding that “the different visual elements added, including graffiti, a brick backdrop, and (especially) the large red cross over the image, considered in connection with the music and lyrics of East Jesus Nowhere, ‘add something new, with a further purpose or different character’ than Plaintiff’s original work.”

Green Day moved for its attorneys’ fees as the prevailing party under 17 U.S.C. § 505. (“In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”).  The district court noted that “The pivotal inquiry is whether the successful defense furthered the goals of the Copyright Act.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994)

The court lays out the Fogerty factors a court considers when deciding whether to award attorney fees to the prevailing party:

These factors are: (1) the degree of success obtained; (2) frivolousness; (3) motivation; (4) the objective unreasonableness of the losing party’s factual and legal arguments; and (5) the need, in particular circumstances, to advance considerations of compensation and deterrence.

The court concluded that:

Just as John Fogerty’s defense of his copyright in “the Old Man Down the Road” vindicated his right and the right of others to compose music in the distinctive “Swamp Rock” style, Staub and the Green Day defendants’ successful defense of the video backdrop and the East Jesus Nowhere performance-experience secured the public’s access to these works and paved the way for the Defendants and others to manipulate and reinterpret street art in the creation of future multimedia compilations. See Fantasy, 94 F.3d at 556. Because the Defendants’ success “enrich[ed] the general public through access to creative works,” paved the way for the creation of new works, and furthered the Copyright Act’s “peculiarly important” interest in demarcating the boundaries of copyright law, the Court finds that the fair use defense of the video backdrop and the East Jesus Nowhere live performance implicated the ultimate interests of copyright and should be encouraged. See id.; Fogerty, 510 U.S. at 527 (defendants “who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate them”). .

It probably didn’t help that Seltzer’s attorney had cited to an overturned case as binding precedent (“Plaintiff’s citation to Hustler, a case applying the “dual” standard rejected by the Supreme Court in Fogerty, edges close to an affirmative attempt to mislead the Court.”)

Brownmark Films, LLC v. Comedy Partners, 10-cv-1013 (E.D. Wis., Nov. 30, 2011),

In the South Park “What What in the Butt” case discussed here, the district court granted defendant Comedy Central’s motion to dismiss.  Comedy Central moved for its attorneys’ fees.  The district court noted the relevant 7th Circuit refinement of Fogerty:

According to the Seventh Circuit, the “two most important [of these] considerations…are the strength of the prevailing party’s case and the amount of damages or other relief the party obtained.” Assessment Techs. of Wisconsin, LLC v. Wire Data, Inc., 361 F.3d 434, 436 (7th Cir. 2004). Furthermore, the Seventh Circuit has specifically noted that, while “prevailing plaintiffs and prevailing defendants are to be treated alike,” the presumption in favor of awarding fees to a prevailing defendant is “very strong.” Id., at 436–37 (refining Fantasy, 510 U.S. at 534; citing Diamonds Star Building Corp. v. Freed, 30 F.3d 536, 506 (4th Cir. 1994)).

The district court determined that

The defendants’ fair-use argument was very strong, and Brownmark’s legal position was objectively unreasonable. The Court took the somewhat rare step of deciding this case at the motion to dismiss stage, precisely because the defendants’ fair-use defense was so strong, satisfying all four fair-use factors. First, the Court found that South Park’s work was a “clear” parody, which one could gather quickly and easily from watching the episode. Second, South Park’s version of the video was transformative, using the series’ own characters and a different recording of the song, even if the words and images were similar. Third, even with those similarities, South Park made many changes to the form of the original and used only enough lines to conjure up the original. South Park’s use was insubstantial. And, fourth, the Court found that South Park’s version of the video would not usurp the market for Brownmark’s original. In fact, in this respect, it is most likely that South Park’s use would have spurred demand for the original, making the viral video’s spread more rapid after its exposure to a national television audience. The satisfaction of these factors shows that the defendants’ case was very strong.

Inquiring further, the Court finds that Brownmark’s legal positions were also objectively unreasonable, and thus their position was frivolous.  … Further, the Court is convinced that Brownmark’s motivation in filing this suit was questionable. Not only was Brownmark’s position unreasonable, but it also waited nearly two years to file a lawsuit, only after being repeatedly rejected with warnings that South Park’s use was copyrighted. (Docket #34, Ex. B). This demonstrates an attempt by Brownmark to use the threat of litigation against the defendants as a sort of “sword of Damocles”—hanging by a thread over the heads of the defendants while Brownmark attempted to extract a licensing fee.

However, having decided that the defendants were entitled to attorneys’ fees, the court, in its discretion, decided to reduce the award because of Brownmark’s limited resources; the court decided to “impose a fee that is lower than the $31,525.23 reasonable amount; this final feewill be tied to Brownmark’s size and ability to pay.”  It does strike me as a bit counter intuitive to argue, as the court does, that Brownmark was essentially trying to extort Comedy Central, but shouldn’t pay all of Comedy Central’s legal fees, because Brownmark can’t afford it.

The Green Day order is below:
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The South Park order is below:
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South Park’s Use of “Butt” Deemed Fair Use

Why is the United States District Court of the Eastern District of Wisconsin discussing South Park’s butt?  In this case Brownmark Films, LLC sued Comedy Partners et al (“Comedy Central”) over a music video entitled “What What (In the Butt)” (“WWITB”), “a nearly four minute ditty regarding the derrière of the singer of the underlying work” that went viral on YouTube and garnered more than 40,000,000 views.  The Court describes the case thusly,

“The heart of the video features an adult African American male ensconced in a bright red, half-buttoned, silk shirt, dancing, grinning creepily at the camera, and repeatedly singing the same cryptic phrases: “I said, what what, in the butt” and “you want to do it in my butt, in my butt.”  Meanwhile, the defendants are the entities involved in the production of “South Park,” an animated sitcom that centers on the happenings of four foul-mouthed fourth graders in a small mountain town in Colorado.”

This is a ruling on a summary judgment motion by defendant Comedy Central.  The issue at hand is whether the South Park episode entitled “Canada on Strike,” in which one of the characters—the naive “Butters Stotch”—is coaxed by his fellow classmates to record an internet video that replicates parts of the WWITB video infringes Brownmark’s copyright.  In the South Park episode, the nine-year old Butters makes his own music video featuring the central lines of the original video, while dressed as a teddy bear, an astronaut, and even as a daisy, in the hopes of making money on the Internet.  In the episode, Butters’ video, much like the original WWITB video, goes “viral,” with millions watching the clip.

The court examines the procedural issue of whether Brownmark as legal standing to sue as related to copyright interests.  It concludes that Brownmark does have standing because it holds a non-exclusive right to the music video in question.

The court next addresses “fair use.” But first, the Court must determine whether the Court, in a motion for summary judgment, can resolve a motion to dismiss in the defendants’ favor because of the existence of fair use as an affirmative defense.  The Court concludes that the issue of fair use may be properly addressed because,

“Ultimately, “context is king” in this case in deciding whether the plaintiff has provided in its complaint and the materials referenced in that complaint the necessary information to warrant a dismissal based on an affirmative defense. Here, the amended complaint discusses a very limited context for the alleged infringement.”

The court held that parody is fair use and South Park’s use of Brownmark’s work was parody.  The Court readily concluded that the “defendants use of the music video in the South Park episode was “fair”” under the fair use doctrine of copyright law.

“The fair use doctrine allows for a “limited privilege in those other than the owner of a copyright to use the copyrighted material in a reasonable manner without the owner’s consent.” The rationale behind the doctrine is that unauthorized uses of a copyright are permissible when they “advance the underlying constitutional purpose of copyright law: to promote broad public availability of literature, music, and other forms of creative arts.”  Specifically, 17 U.S.C. § 107, which codifies common law fair use principles, provides that the “fair use of a copyrighted work” for such purposes as “criticism” and “comment” “is not an infringement of a copyright.” Moreover, the statute provides four guideposts by which to determine whether a particular use is “fair”: (1) the purpose and character of the use; (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.” (internal citations omitted)

The Court determined that South Park’s use of Brownmark’s copyrighted material was covered by the fair use exception of copyright law as parody.  As the court explained,

One only needs to take a fleeting glance at the South Park episode to gather the “purpose and character” of the use of the WWITB video in the episode in question. The defendants used parts of the WWITB video to lampoon the recent craze in our society of watching video clips on the internet that are – to be kind – of rather low artistic sophistication and quality.  The South Park episode “transforms” the original piece by doing the seemingly impossible – making the WWITB video even more absurd by replacing the African American male singer with a naive and innocent nine-year old boy dressed in adorable outfits.  The episode then showcases the inanity of the “viral video” craze, by having the South Park fourth graders’ version of the WWITB video “go viral,” seemingly the natural consequence of merely posting a video on the internet.  More broadly, the South Park episode, with its use of the WWITB video, becomes a means to comment on the ultimate value of viral YouTube clips, as the main characters discover that while society is willing to watch absurd video clips on the internet, our society simultaneous assigns little monetary value to such works.  The South Park “take” on the WWITB video is truly transformative, in that it takes the original work and uses parts of the video to not only poke fun at the original, but also to comment on a bizarre social trend, solidifying the work as a classic parody.

Comedy Central’s motion to dismiss was granted, with prejudice.  The Court noted the prejudice and its displeasure with what he deems to be a waste of Court time by Brownmark’s lawyers’ incompetence.

The court’s order is below:
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Making Sense of “Fair Use”

Neil Netanel, a professor at UCLA Law School and my former colleague when I was with Fulbright & Jaworski, has written an excellent study of the evolution of how courts apply the fair use doctrine entitled Making Sense of Fair Use, forthcoming in the Lewis & Clark Law Review (v.15, No.3) and available here.

As Prof. Netanel describes, commentators have long complained about the seemingly ad-hoc and arbitrary outcomes of copyright infringement cases in which defendants adopt a “fair use” defense.  After reviewing several prominent law review articles that survey the case law in an attempt to determine a predictable pattern in fair use cases, Prof. Netanel conducts his own study and finds that the fair use landscape is less arbitrary than other scholars have suggested.

Prof. Netanel begins by defining the two dominate fair use analysis paradigms: “market-centered” and “transformative use.”

“The market-centered paradigm treats fair use as an anomalous exception to the copyright owner’s exclusive rights, applicable only in cases of irremediable market failure.  It owes its origin to Professor Wendy Gordon’s highly influential law review article, published in 1982, Fair Use as Market Failure: A Structural Analysis of the Betamax Case and Its Predecessors, in which Gordon argued that fair use should be available only when the defendant meets the heavy burden of proving both that high transaction costs pose an insurmountable obstacle to copyright licensing and that the use serves an identifiable public benefit that would outweigh any harm caused to the copyright owner by granting fair use.”  This interpretation of fair use was adopted by the Supreme Court in Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985).

“The transformative use paradigm … was set out by Judge Pierre Leval in his law review article, Toward a Fair Use Standard, published in 1990, and adopted by the Supreme Court in 1994 in Campbell v. Acuff-Rose [510 U.S. 569 (1994)].  Under this paradigm, the key question in fair use analysis is whether the defendant’s use is ‘transformative,’ not whether the defendant might have obtained a license or the copyright owner would have reasonably consented to the use.  The transformative use paradigm views fair use as integral to copyright’s purpose of promoting widespread dissemination of creative expression, not a disfavored exception to copyright holders’ exclusive rights.”

Rather than finding that courts arbitrarily apply fair use analysis, as previous studies have suggested, Prof. Netanel finds that “[since] 2005, the transformative use paradigm has come to dominate fair use case law and the market-centered paradigm has largely receded into the pages of history.  Today, the key question for judicial determination of fair use is not whether the copyright holder would have reasonably consented to the use, but whether the defendant used the copyrighted work for a different expressive purpose from that which the work was created.”