by Bill Hadley, UNeMed | Jan. 9, 2013

President Kennedy, his wife Jacqueline, and Texas Governor John Connally in the presidential limousine, minutes before Kennedy was assassinated on Nov. 22, 1963.

On November 22, 1963, at precisely 12:30 pm, shots rang out from the Texas School Book Depository overlooking Dealey Plaza in Dallas, Texas.  The shots tore into the motorcade that traveled through the plaza, wounding Texas governor John Connally,  bystander James Tague, and killing John F. Kennedy, the 35^th President of the United States.  Also present that day was Abraham Zapruder, a russian immigrant who had, on a whim, decided to film the motorcade as it passed through Dealey Plaza.  While there were many photographers present, in a bizarre stroke of fortune (or misfortune), Zapruder was one of the few people actually capturing the procession on film –  and one of the fewer still who were capturing film from a vantage point that provided an unimpeded view of the presidential motorcade as the bullets ripped through it.

All told, the “Zapruder Film” comprises 26.6 seconds (486 frames) of footage documenting the event. Recognizing the value of the footage, Zapruder promptly sold the original film to Life Magazine for $150,000 (just over $1.1 million today). Three years later, Josiah Thompson, a former employee of Life, decided to publish his own account of the tragedy in his book Six Seconds in Dallas.  Unable to receive Life’s permission to use frames from the Zapruder Film in his recounting of the events, Thompson hired an artist to re-create the relevant frames from the film in the form of charcoal sketches, which were subsequently included in the book for analysis.

Shortly thereafter, Life sued Thompson for infringing its copyright in the Zapruder Film and, inherently, the still frames that make up the film.  Among other defenses, Thompson claimed that his re-creation of the frames was permissible under the Fair Use Doctrine – a principle that permits copyright infringement in certain circumstances (note: at this time Fair Use was a common law principle – today it is formally codified in the Copyright Act).  In 1968, the Federal District Court for the Southern District of New York heard the case and ruled in favor of Thompson (Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y 1968).

If you’re scratching your head over this one, don’t feel bad.  Ostensibly, this is a textbook case of copyright infringement: after all, Thompson duplicated a creative work – the Zapruder Film/frames – to which he had no legal claim, without the permission of the lawful owner, and published the duplicate images for his own financial benefit.  So how on earth did the court find this permissible?  To understand, it’s imperative that one is familiar with the Fair Use defense – perhaps the most ambiguous, frustrating, non-sensical, and necessary, limitation on the scope of copyright protection.

The Fair Use Defense and the Copyright Act of 1976

Fair use (also called “fair dealing” in certain foreign jurisdictions) is an affirmative defense to a charge of copyright infringement that permits limited use of a copyrighted work without permission from the copyright holder.  Typical fair uses of a copyrighted work are for purposes such as criticism, commentary, scholarship, and parody.  At its core, fair use is representative of the balance inherent in all intellectual property schemes; in this case, it is recognized that, in some circumstances, public policy dictates that limited use of copyrighted material should be encouraged, despite the potential negative implications on the incentives offered by §106 of the copyright act.

Note that fair use is an affirmative defense to a claim of copyright infringement.  That is, even if a copyright holder can establish that a defendant infringed their copyright, if the defendant can show its use of the protected work is permitted under the fair use provision of the copyright act, the defendant will not be liable for copyright infringement.  To help determine if a specific use of copyrighted material is permitted as a fair use, Congress has implemented a four-factor test in 17 U.S.C. § 107 to weigh the equity – fairness – of the use.

17 U.S.C. § 107 states, in relevant part:

Notwithstanding the provisions of §106 and §106(a), 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 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.

Note that this is a factors test:  that is, a court will consider each factor independently in order to weigh the overall equity in permitting the infringing use.  Due to the subjective nature of each factor, along with their high degree of sensitivity to specific facts,  it would take pages to summarize the way courts have come out on fair use analyses.  I will not go into that much depth here, but here’s a little taste of what courts tend to look at when considering each factor.

Purpose and Character of the Use

Courtesy of Courtoons.com.

Arguably the most important factor in the fair use analysis is the purpose and character of the use of the work.  In evaluating the use, “transformative” uses are more likely to weigh in favor of the would-be fair user while uses that are “derivative” are more likely to weigh against a fair use finding.  Generally speaking, a work is transformative if it includes independent creativity by the would-be fair user, such as in a piece of criticism (where a copyrighted passage might be reproduced for purposes of analysis in the criticism) or a parody (where copyrighted material might be reproduced in order to comment on it).

For an interesting (and awkward…) discussion of the importance of this principle, check out Campbell v. Acuff-Rose, Music Inc., 510 U.S. 569 (1994), where 2 Live Crew’s  parodic sampling of Roy Orbison’s Oh, Pretty Woman was determined to be a sufficiently transformative fair use of the original work.

Nature of the Copyrighted Work

Arguably the least important factor in the fair use analysis, here courts look to evaluate the degree of creativity of the copyrighted work.  As such, fictional works generally weigh in favor of the copyright holder while non-fiction works are more likely to favor the would-be fair user (as Life Magazine found out…but I am getting ahead of myself).

Amount and Substantiality of Use

In evaluating this factor, courts look at both ‘how much’ and ‘what’ the would-be fair user has taken from the copyrighted work.  Courts have run the gamut here, finding for a fair use defense even when a user has liberated all of a copyrighted work (see e.g. Kelly v. Arriba Soft Corporation, 280 F.3d 934 (9th Cir. 2002)) and against a fair use defense when the user took only a small piece of the copyrighted work (Harper & Row Publishers Inc. v. Nation Enterprises, 471 U.S. 539 (1985).

Overall, there are two primary considerations at play here.  First, did the would-be fair user take as little of the copyrighted work as necessary to complete its own creative work?  If so, it favors a finding of fair use.   Secondly, did what was taken of the copyrighted work make up the “heart” (e.g. most powerful or interesting passages, the definitive quality of the copyrighted work, etc.) of it?  If yes, courts tend to disfavor a fair use finding.

Effect of Use on Copyright Value

The final factor in the fair use analysis considers the effect the would-be fair use has on the market value of the original copyrighted work.  If the fair use harms the market value of the original work, courts tend to disfavor the fair use, while if it has no impact – or increases – the value of the original, courts will generally favor a fair use determination.  Note that while the later decided Campbell case (above) describes the primacy of the “purpose and character” of the use as a factor, earlier cases, such as Harper & Row, assert the primacy of the “Effect of Use” factor as the most important consideration.

 Application of the Fair Use Defense

Reliance upon the fair use defense is problematic. Not only can evaluations of the different factors vary widely amongst different courts, but judges are given little guidance as to how the factors should be weighed against each other.  What, for example, is a judge to do with a highly transformative parody, when the underlying copyrighted work was very creative, was copied in its entirety, and the parody significantly diminishes the commercial value of the underlying work?  What about a work that is copied in its entirety, for purely commercial benefit by the would-be fair user, but where the work is minimally creative and the value for the underlying work is not harmed?

Unfortunately, given the subjective nature of the factors involved (e.g. How transformative is “enough”? What is the “heart” of the work?  How creative, exactly, was the underlying work really?) and the factors’ sensitivity to specific fact patterns, fair use case law has a broad spectrum of results and is not very helpful, on the whole, either.

Ironically, the difficulties with the fair use defense were specifically addressed (intended?) by Congress as far back as 1967, when, in an impressively prescient analysis, the House Judiciary Committee noted that:

Although the courts have considered and ruled upon the fair use doctrine over and over again, no real definition of the concept has ever emerged.  Indeed, since the doctrine is an equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts…the endless variety of situations and combinations of circumstances that can arise in particular cases precludes the formulation of exact rules in the statute. 

Eventually the fair use doctrine was codified in the Copyright Act of 1976 (as 17 U.S.C. §107), but the concerns of House Judiciary Committee persist.  As such, there will always be a degree of uncertainty whenever a fair use defense is in play.

Fair Use and the Zapruder Film

So how did the court find in favor of Thompson based on his fair use claim?  You can find the court’s analysis in para. 131-4 of Time, Inc. v. Bernard Geis Assocs., but the following passage stands out in terms of illuminating the court’s thought process:

There is a public interest in having the fullest information available on the murder of President Kennedy. Thompson did serious work on the subject and has a theory entitled to public consideration. While doubtless the theory could be explained with [other non-infringing representations], the explanation actually made in the Book with copies is easier to understand. The Book is not bought because it contained the Zapruder Pictures; the Book is bought because of the theory of Thompson and its explanation, supported by Zapruder pictures.

In other words, the public’s interest in Thompson’s analysis of the work, enabled by his infringement of the frames of the Zapruder Film, outweighed Life’s interest in the copyright.  Given Thompson’s financial interest in the infringement and the overall bad faith he showed in intentionally copying the frames, this certainly is an interesting outcome for an equitable doctrine – but it goes to show how perplexing the fair use doctrine can be.

So, given everything discussed above, the take-home message is this:  when utilizing someone else’s copyrighted material, try to obtain permission first.  If you do not, are sued, and are subsequently forced to assert a fair use defense, the only person who can be confident of a win will be your attorney.

If you have any questions or comments, please do not hesitate to contact the author or leave a comment below.

Join us next week when we discuss the implications of technology transfer.

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by Bill Hadley, UNeMed | Sept. 17, 2012

In 2009, Fredrik Colting attempted to publish 60 Years Later: Coming Through the Rye, a thinly-veiled sequel to The Catcher in the Rye, by J.D. Salinger.

In 2009, Swedish author Fredrik Colting (under the pen name J.D. California) attempted to publish a  book titled 60 Years Later:  Coming Through the Rye. Unfortunately, Coming Through the Rye, was a thinly-veiled sequel to the 1951 classic, The Catcher in the Rye, by J.D. Salinger.  Both novels are set in New York, feature the same characters (though identified differently – Holden Caulfield is called “Mr. C”, for example), and feature similar events. Salinger sought to prevent Colting from publishing the sequel and sued him for copyright infringement. Salinger eventually won, but Through the Rye illustrates complex issues about the scope of our copyright system.

1. Copyrights promote the progress of science and the useful arts

How far, exactly, does Salinger’s copyright in The Catcher in the Rye extend? Does it allow Salinger to prohibit others from using similar story arcs, characters, or themes? Conversely, Through the Rye can easily be viewed as a simple cash grab – that Colting simply sought to take advantage of the popularity of Catcher in order to “take the easy way out” in writing his own novel. Should this be permitted?  Where do courts draw the line in determining whether Colting was merely “inspired by” Salinger, commenting on Salinger, or whether he was flat-out copying him? Don’t all stories, to some extent, build on their predecessors?

These are not easy questions to answer, and they strike at the heart of the copyright system. Copyrights, along with patents, are explicitly implemented by the Constitution to promote the “progress of science and the useful arts”. But is that really happening here? Some would argue that Salinger’s copyright is inhibiting creative progress by sabotaging Colting’s ability to publish his own work. Others would argue that it is functioning perfectly because Colting’s work is not creative at all:  it simply exploits the creativity of Salinger. Copyrights are necessary, this latter group would argue, to protect the original author’s interest in his creation and to maintain the sanctity of the creative work.

Be under no illusions – I don’t have the space to faithfully examine these (extremely controversial) issues here.  But, by providing the framework for how the copyright system operates, I can hopefully provide a basis for you to reach your own educated conclusion.

2. Works that may be copyrighted

Under 17 USC § 102(a), a copyright may be granted to:

Any original work of authorship fixed in a tangible medium of expression, now known or later developed, from which [the original work of authorship] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Using this definition, 17 USC § 102(a) illustrates the types of work that are eligible for copyright protection:

Pointedly, 17 USC § 102(b) explicitly disclaims ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries from copyright protection. In other words, a copyright only extends to the expression of an idea, not to the idea itself. Thus, an author may have a copyright on a novel exploring teenage angst, but the copyright only extends to the expression of teenage angst provided in that novel, not to all novels displaying teenage angst.

3. Exclusive rights are granted by a copyright

Under 17 USC § 106, the owner of a copyright has the exclusive right to do the following with the copyrighted work for the life of the author, plus an additional 70 years:

Unfortunately, the way these exclusive rights work in practice is not at all obvious. In fact, there are far too many nuances to these rights to describe in detail here.  For a more in-depth explanation, check out this article.

4. Unauthorized use leads to copyright infringement

Ronnie Mack sued George Harrison for copyright infringement over Harrison’s 1970 hit “My Sweet Lord”. Compare the works here.

Simply put, a copyright is infringed when there is an unauthorized use of one of the exclusive rights from 17 USC § 106. Sometimes this determination is easy – often it is clear if an unauthorized party is distributing or displaying a copyrighted work. On the other hand, it is much more difficult, in many cases, to determine whether someone is actually reproducing a copyrighted work.

To resolve this issue, courts generally apply some form of the “substantial similarity” test. Determining whether the reproduction right of a copyright has been infringed, however, is actually quite complex, and application of the substantial similarity test is not a settled issue among the circuits. Therefore, for now, suffice to say that infringement of the reproduction right occurs when there has been an unauthorized copying of the material portion of a creative work.

For a comparison of a number of fascinating cases alleging infringement of a musical copyright, I highly recommend checking out the UCLA /Columbia University Music Copyright Infringement Resource.

5. Obtaining a copyright is a piece of cake

A copyright automatically vests in the author upon creation of a copyrighted work in a tangible medium of expression. So, in effect, all that is necessary to obtain a copyright is to complete work that is eligible for a copyright. It is also possible to formally register a copyright. To do so, all that is required is to complete an application form and submit a nominal 35$ fee along with a copy of the copyrighted work to be stored at the Library of Congress. Registering a copyright definitely has a number of important benefits for copyrights with commercial value.

Conclusion

In early 2012, the Congress attempted to pass the “Stop Online Piracy Act” (SOPA) in a desire to curb internet-based copyright infringement. Due to outcry from sources like Wikipedia (shown above), the House Judiciary Committee has postponed consideration of the bill.

Copyright protection extends to original works of authorship which are fixed in a tangible medium of expression.  Furthermore, the copyright only extends to the expression of the idea behind that work of authorship – not the idea itself. Simple, right? Sort of – but unfortunately things become much more complex when applying concepts like Fair Use, Works for Hire, and the First Sale or Merger Doctrines. Moreover, copyrights as applied to software can be even more troublesome, especially when placed in the context of the internet.

The fact of the matter is that copyrights (usually) make a great deal of sense when discussing tangible items like books, artwork, or sheet music (i.e. things that were around when the copyright laws were drafted). They become much more complicated when applied to the newer digital mediums. The Digital Millennium Copyright Act seeks to address some of these issues, but in many cases only makes things more complicated. Hopefully we can discuss this in a subsequent post, but for today I hope this brief summary was useful in providing an overview of this commonly muddled area of the law.

If you have any questions or comments, please do not hesitate to contact the author or leave a comment below.

Join us next week when we discuss inventorship and naming co-inventors.

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