A guide to the fair-use defense
This article was written by Rex S. Heinke and Heather D. Rafter. It appeared in the ABA Section of Business Law in July/August 1994. Heinke is a partner with Gibson, Dunn & Crutcher in Los Angeles. Heather Rafter is counsel for Digidesign in Palo Alto, California. This material is reproduced by their kind permission.
Most people know this rule: If you copy someone else's copyrighted work, you put yourself in the line of fire for a copyright infringement action.
Forget about whether the work didn't even have a copyright notice on it or whether you acted innocently. Neither is a defense, although they may help you reduce the damages award.
But suppose that a rap artist has come out with a parody borrowing lyrics and melody from a golden oldie? Is that allowed? Or is it OK for your client to use excerpts from Consumer Reports in an advertisement? Or for you to photocopy a law review article in your legal research?
Theoretically, you can turn to Section 107 of the Copyright Act - which spells out the fair use defense - to find your answers to copyright quandaries. We say theoretically because, even though Section 107 has planted the pillars of the fair use edifice, through the years courts have used various tools of reasoning to put together the rest of the structure. As a result, copiers of copyrighted material have too often been unable to find any assuredly safe shelter. About all that can be said with certainty is that copyright matters often seem full of uncertainty. Unfortunately, there is no simple checklist for what's fair and what's not.
The problem is hardly new. For well over a hundred years, the fair use defense has perplexed courts, lawyers and clients. In 1845, a circuit court described fair use as raising "one of those intricate and embarrassing questions" for which it is not "easy to arrive at any satisfactory conclusion or to lay down any general principle applicable to all cases." A century later the 2nd Circuit Court of Appeals said fair use is "the most troublesome (issue) in the whole law of copyright." As the U.S. Supreme Court recently explained, fair use is "an `equitable rule of reason,' which `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.'" [Stewart v. Abend, 495 U.S. 207, 236 (1990)].
Despite the difficulties inherent in applying this "equitable rule of reason" to new fact situations, courts have rendered many decisions about what is - and is not - fair use, including the recent Supreme Court decision in Campbell v. Acuff-Rose Music, Inc., [114 S. Cr. 1164 (1994)]. We'll try here to point out some patterns we have found.
Section 107 of the Copyright Act raises nearly as many questions as it answers. It states:
"The fair use of a copyrighted work, including such use by reproduction ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement or copyright."The statute then lists four factors that should be considered in determining whether a use is fair:
1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
2) the nature of the copyrighted work;
3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4) the effect of the use upon the potential market for or value of the copyrighted work.
How, then, have courts analyzed these factors? First, let's walk down the street with a pretty woman.
Acuff-Rose and parody
The Supreme Court has heard only a handful of fair use cases over the years. Its initial encounters were not entirely satisfactory. Either the court upheld lower court rulings by an equally divided vote or, as in the case of Sony Corp. of America v. Universal City Studios, Inc., [464 U.S. 417(1984)], it reached a 5-4 decision after the case had been reargued. However, the court's most recent pronouncement is a unanimous decision about a parody.
In Campbell v. Acuff-Rose Music, Inc., decided March 7, 1994, the Supreme Court dispelled several misapprehensions that had surrounded the fair use defense and significantly broadened the protection it provides. The case involved a copyright infringement claim filed by Acuff-Rose Music, the owner of Roy Orbison's rock ballad, "Oh, Pretty Woman," against the rap group 2 Live Crew for its parody song, "Pretty Woman." No one contested the rap parody infringed on the copyright of the original - unless it was determined to be a fair use.
The district court granted summary judgement in favor of 2 Live Crew, but the 6th Circuit Court of Appeals reversed in a 2-1 decision.
The Supreme Court held that the Court of Appeals erred in three principal respects. First, the Court of Appeals, in analyzing the first factor in the fair use inquiry - "the purpose and the character of the use" - relied heavily on the commercial nature of the parody. The Court of Appeals had quoted language from the Supreme Court's decision in Sony, which stated that "every commercial use of copyrighted material is presumptively...unfair." The Supreme Court, however, stated that the Sixth Circuit erred in giving virtually dispositive weight to that factor. "The Court of Appeals' elevation of one sentence from Sony to a per se rule runs as much counter to Sony itself as to the long common-law tradition of fair use adjudication," the Supreme Court said.
Second, the Supreme Court held that the 6th Circuit erred in its analysis of the third fair use factor, which considers "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." The 6th Circuit had found against 2 Live Crew, concluding that the opening riff and opening lyrics copied by 2 Live Crew were qualitatively substantial. The Supreme Court disagreed:
"Copying does not become excessive in relation to parodic purpose merely because the portion taken was the original's heart. If 2 Live Crew had copied a significantly less memorable part of the original, it is difficult to see how its parodic character would have come through."
Third, the Supreme Court disagreed with the court of appeals' analysis of the fourth statutory factor concerning the effect of the parody on the potential market for the Orbison song. The high court held that it was unlikely the market for the copyrighted work would be affected, saying that customers did not buy the parody in order to obtain the original work, and that it was unlikely the rap song parody would substitute for the original.
Acuff-Rose substantially broadened the fair use defense in general and its application in parody cases in particular. It rejected the notion that any commercial use is presumptively unfair, and it recognized that, because a parody is not a substitute for the original work, it does not harm the market for the original.
One unanswered question that remains after Acuff-Rose is the definition of a parody. For one thing, can a song be a parody if it makes no reference to the subject matter of the original song and only uses its composition in a totally different way? Apparently not, according to the 2nd Circuit Court of Appeals. In MCA Inc. v. Wilson, [677 F.2d 180 (2nd Cir. 1981)], the Court of Appeals held that the defendant's pornographic song, with its pornographic twist on the title of "Boogie Woogie Bugle Boy of Company-B," was not a fair use because it did not comment on the original work. The court stated: "If the copyrighted song is not at least in part an object of the parody, there is no need to conjure it up."
Similarly, in Rogers v. Koons, [960 F.2d 301 (2nd Cir.), cert. denied, 113 S. Ct. 365 (1992)], the same court held that a sculptor's copying of a photograph could not qualify as a fair use despite the defendant's claim that his sculpture was a parody of modern society. The Rogers court reasoned that in order to qualify as a fair use parody, the sculpture must parody the copied work.
Another question is whether a work can be a fair use if it contains pornographic, vulgar or otherwise offensive content. Courts have tended to resolve fair use defenses against defendants in such circumstances, ruling against:
- a poster of topless Dallas Cowboy cheerleaders created by copying and altering a photograph of fully clad cheerleaders; [Dallas Cowboy Cheerleaders Inc. v. Scoreboard Posters Inc., 600 F.2d 1184 (5th Cir. 1979)];
- the use of 17 Walt Disney cartoon characters in an underground comic book that portrayed them as members of a promiscuous, drug-taking culture. [Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132 (1979)].
Criticism, scholarship, research
Although fair use includes "criticism," "comment," "teaching," "scholarship" and "research," Section 107 does not shelter all copying within these categories. The copying must be done for purposes that enhance knowledge or are otherwise productive.
In Williams & Wilkins Co. v. United States, [487 F.2d 1345 (Ct. Cl. 1973), aff'd by an equally divided court, 420 U.S. 376 (1975)], the Court of Claims ruled that the photocopying of entire articles from scientific journals was a fair use. The plaintiff, a publisher of several medical and scientific journals, sued the federal National Institutes of Health (NIH) library and the federal National Library of Medicine (NLM) after the libraries photocopied copyrighted materials for medical researchers. Both NIH and NLM followed certain photocopying guidelines that strictly limited the amount of copying done for any individual. Nevertheless, NIH alone copied about 93,000 journal articles totaling more than 900,000 pages in a single year.
In concluding that NIH's and NIM's copying was a fair use, the Court of Claims noted that the defendants were non-profit institutions "devoted solely to the advancement of individual knowledge ... and are not attempting to profit or gain financially by the photocopying." The court also recognized the procedures followed to restrict the number of copies. Finally, and perhaps most important, the court reiterated its strong belief that medical research would be "seriously hurt" if library photocopying were not permitted.
In another case, Consumers Union v. General Signal Corp., [724 F.2d 1044 (2d.Cir.), cert. denied, 469 U.S. 23 (1984)], the 2nd Circuit Court of Appeals held that the defendant's copying of excerpts from a favorable review from Consumer Reports to advertise a product was a fair use. The court noted, among other things, that the advertisement conveyed to consumers useful information that is protected by the First Amendment. In yet another case, Hustler Magazine v. Moral Majority, [796 F.2d 1148 (9th Cir. 1986)], the court ruled that it was a fair use for Jerry Falwell to reproduce for fund-raising purposes a one-page parody about him published by Hustler. The court justified Falwell's wholesale copying of the parody on the grounds that he needed to do it so he could defend himself and comment on the pornographic nature of Hustler.
On the other hand, courts have held that the following uses were not fair.
- extensive copying of questions from the Medical College Admission Test for use in a test-preparation course. In granting a motion for preliminary injunction, the court stated that it was "at best unclear whether (defendant's) cram course is the type of activity protected by 17 U.S.C. Section 107." [Assoc. of Am. Medical Colleges v. Mikaelian, 571 F. Supp. 144 (E.D. Pa 1983), aff'd per curiam, 734 F.2d 3 (3d. Cir. 1984)].
- copying portions of a copyrighted book on the social psychology of love, including verbatim copying of "liking" and "love" scales, for use in a commercial magazine article entitled "How's Your Love Life?" [Rubin v. Boston Magazine, 645 F.2d 80 (1st Cir. 1981)].
Similarly, in American Geophysical Union v. Texaco, Inc., [802 F. Supp. 1 (S.D.N.Y 1992)], the Southern District of New York found that Texaco's copying of articles from copyrighted journals for commercial research purposes did not qualify as fair use. The plaintiff copyright holders in Texaco had established a licensing fee arrangement through the Copyright Clearance Center for the reproduction of their works, meaning those works were easily available to Texaco and others. The Texaco case is currently being appealed, and a decision is expected shortly.
The fair use defense has even been denied to a non-profit organization. In Encyclopedia Britannica Educational Corp. v. Crooks, [542 F. Supp. 1156 (W.D.N.Y. 1978)], the court rejected the contention that it was a fair use for the defendant, a non-profit educational service that videotaped copyrighted programs from educational television stations, to distribute these programs to public schools. The court seemed strongly influenced by the amount of copying (more than 14,000 programs) and the fact that the copying and distribution virtually supplanted the market for the plaintiff's works.
Despite the fact that Section 107 lists "news reporting" as an example of fair use, it long remained unclear whether this was so. The Supreme Court's decision in Harper & Row Publishers Inc. v. Nation Enterprises, [471 U.S. 539 (1985)] clarified that issue. In that case, the court ruled that the appropriation by the Nation magazine of more than 300 words from the 200,000-word unpublished memoirs of former President Gerald Ford could not be excused as a fair use. The Nation published the excerpts about Ford's pardoning of Richard Nixon before the publication of Ford's memoirs. As a result, Time magazine, which had agreed to pay for the rights to serialize Ford's memoirs before their publication, refused to do so. This was central to the court's ruling. The Nation's publication supplanted the demand for the plaintiff's work and caused direct economic harm.
Courts have also extended the fair use defense to allow copying in a variety of other situations that do not fit squarely within Section 107's enumerated categories. Although those cases are beyond the scope of this article, they include home taping of television broadcasts and reverse engineering of computer software.
From the preceding examples, a few fundamental factors can be identified that will help tip the balance in favor of a fair use finding, although none guarantees that result:
1) The underlying purpose for copying should fit within one of the enumerated fair use categories - criticism, comment, news reporting, teaching, scholarship or research - or else qualify as a parody or serve some other production purpose;
2) The amount of copying should be no more than necessary to fulfill the intended purpose, although wholesale copying is not an absolute bar to a fair use finding;
3) There should be no easy alternative to copying. If the copyright holder has not established an easy and inexpensive way to license the work or has rejected that option altogether, then a fair use finding is more likely; and
4) The copying should not deprive the copyright owner of the market for its work. Although copying can harm that market, as a parody does when it criticized the original work, the copy should not serve as a replacement or substitute for the original work.
Ultimately, however, the fair use doctrine is an equitable rule of reason. In deciding whether to copy, think about what seems "fair." That is, does the copying seem justifiable under Section 107 and in light of existing case law? If, on balance, it seems reasonable, a court is likely to agree -- especially if the allegedly infringing use does not eliminate or reduce the market for the original work.