Category Archives: Fair Use

What week is it? Fair Use week of course!

Next week Fair Use Week will be observed on a number of university campus.  I want to use this short post to bring some resources to my readers’ attention, make a comment on why we should all celebrate fair use week, and provide a foretaste of my contribution to the festivities, which will appear in a different forum.

Harvard announces Fair Use Week with an homage to Justice Joseph Story, who originated the concept in 1841
Harvard announces Fair Use Week with an homage to Justice Joseph Story, who originated the concept in 1841

In the poster above, Fair Use Week at Harvard is connected directly to the origins of this unique aspect of American copyright law, through a statue of Justice Joseph Story, who first defined what we came to call fair use in an 1841 case involving the letters of George Washington.  It is fitting that that case involved a scholarly work, a life of Washington, because fair use was then and still is today one of the most important underpinnings of scholarship.  We argue about its scope sometimes, but we rely on it everyday.  The most basic relationship in academic writing, the quotation of a scholar in another scholar’s work, is a form of fair use that is so central and natural to scholarship that we forget what it really is and the body of law that it depends on.  Fair Use Week is worthy of celebration on our campuses because it is a reminder that this aspect of copyright law is a sine qua non for scholarship and has been for a great many years.

Two institutions that I know of will be featuring fair use information and opinion in blogs, and I wanted to draw these resources to the attention of readers.

Ohio State University hosts a “Copyright Corner” blog that has been providing basic information about fair use all month long.  During the next week it would be worthwhile for readers to review what has been written there.

At Harvard, a new blog called Copyright at Harvard Library will feature posts from invited guests for Fair Use Week.  I hope readers will keep up with that blog, partly because one of those posts — on Tuesday, I am told — will be a contribution from me. And I thought I would offer here a quick summary of what I will say in some detail over there.

My post focuses on a case decided by the Second Circuit Court of Appeals last month.  It was an odd case, involving a lawsuit brought over a surreptitious recording of a conference call made by the business news service Bloomberg.  The recording was distributed to Bloomberg subscribers and the company that held the call sued, claiming copyright infringement.  There are two fascinating issues in the case, I think.  The first involves that fundamental requirement for a copyright, fixation in a tangible medium of expression.  Since they recorded the phone call live, not from some prior fixation, Bloomberg tried to defend themselves by saying that there was no copyright in the call for them to infringe.  The second issue, of course, was fair use.  Both the lower court and the Second Circuit ultimately decided the issue based on fair use, and the analysis that the Appellate Court especially applied is really fascinating.  In my post I try to explain how extraordinary the analysis is, and why it has potential implications for the still-pending appeal in the Georgia State University copyright case and its fair use defense.

I hope that is enough to whet your appetite and send you to the Harvard Fair Use Week blog repeatedly this week, to read my contribution and those from Kenny Crews, Krista Cox and others.

Fair use, Georgia State, and the rest of the world.

UPDATE —  Since I wrote this post, Professor Niva Elkin-Koren of Haifa University has kindly informed me that an English translation of the settlement agreement discussed below is now available on the Israeli A2K in Higher Education website. The direct link to the translated settlement is here.

Ever since the Georgia State copyright lawsuit over e-reserves began, people have suggested an analogy to the ill-fated and now renounced litigation campaign by the recording industry against customers who downloaded music files.  It took years, but it finally dawned on the recording industry that suing your own customers was a bad strategy, pursued only by a desperate industry that cannot figure out how to retool their businesses to offer services that people really need and want.  But as I tell folks, the publishers suing Georgia State have made an even more foolish decision, since they are suing people who are not just their customers, but also their suppliers.  The very academics that are vilified as thieves in this lawsuit are the ones who produce the content that Oxford, Cambridge and Sage take, usually for free, to resell at a high profit.  This is one reason why the publishers cannot win this case, even if the 11th Circuit follows the ill-logic they displayed at oral arguments and gives the publishers some kind of Phyrrhic victory.  The attention they are bringing to their own greed and mismanagement will drive more of the authors they depend on to stop giving these publishers free content to sell, and the current economics of higher education guarantees that they will not be able to offset their losses through the increased permission fees they dream about.

All of this is old news.  But as these three publishers continue to pursue a suicide mission in the U.S., we can see that other, more sensible segments of the same industry, are taking a more sensible approach.  As this blog post from University of Toronto law professor Ariel Katz describes, publishers and academic groups in Israel have come to an agreement about fair use that shows just how grasping and ill-conceived the GSU case is.

Israel adopted a fair use provision nearly identical in language to the U.S. provision in the 2007 revision of its (Israel’s) copyright law.  And, just as in the U.S., a couple of Israeli publishers brought a lawsuit against Hebrew University alleging copyright infringing, a case clearly designed to test and define the limits of the new fair use provision.  But in Israel the case has settled, with an agreement announced last week that defines fair use in a very sensible way that indicates a real commitment to scholarship and education on the part of these Israeli publishers, something wholly lacking from the U.S. plaintiffs.

According to Katz, the settlement in the Israeli case recognizes that both e-reserves and course packs are fair uses of copyrighted material, with full journal articles and excerpts of up to 20% of books falling within the fair use definition.  Note that this agreement allows unauthorized excerpts that are twice as long as the ones tolerated by Judge Evans in the GSU trial decision, which the U.S. publishers are disputing.  This, like a great deal of other evidence, shows us that the U.S. plaintiffs are not simply trying to protect their businesses, as they claim; they are asking the courts to grant them windfall profits they have not earned and do not deserve.  Apparently these smaller Israeli publishers think they can live with this agreement, while some of the richest academic publishers in the world are crying poverty to the U.S. 11th Circuit.

There are some additional qualifications on this Israeli settlement that are worth noting.  The e-reserve systems must be accessible only to students registered for a specific class in order to be fair use, something that is almost always true in the U.S. as well.  Course packs must be produced only on demand and sold only to students registered in a class and at cost.  These limitations are, I believe, things that U.S. higher education would be happy to abide by as well, but the publishers appear to be unwilling to show the same spirit of compromise that their Israeli colleagues have.  Finally, Hebrew University has agreed to pay legal costs for the publishers– less than $100,000 — without admitting any culpability for copyright infringement.  Overall, this is a sensible compromise between sensible parties, something foreclosed in the U.S. by the irrational greed of the GSU plaintiffs.

As Katz points out, this agreement in Israel is not a license being granted to universities by publishers; it is a definition of fair use within a specified context.  And, interestingly, it includes a mutual recognition of the Code of Best Practices for Use of Works in Research and Teaching that has been developed in Israel to interpret fair use.  This Code of Best Practices is similar in some ways to the Code from the Association of Research Libraries; it is certainly not more conservative than the ARL Code.  The Israeli Code explicitly recognizes that the amount used should be considered in relationship to the purpose, and that a loss of income to the publisher does not automatically foreclose fair use.  In thinking about the nature of the original, a topic that confused the 11th Circuit judges so badly, the Israeli Code does not waste time debating factual versus fictional and instead recognizes the greater accessibility required for works “of an academic character.”  It also adopts the same fourth factor criteria favoring fair use that Judge Evans used in the GSU trial, the unavailability of licenses specifically for electronic use. Finally, the Israeli Code treats transformative fair use properly, recognizing that transformation is an important but not required element of the first factor analysis, and that transformation can occur either through actual alterations to the original or when there is a “use of a work in a different manner or for a different purpose or function than that of the original work.”

The Israeli Code of Best Practices is very much worth reading, and there is an interesting article about the Israeli experience with fair use for higher education by four academics available here.

All of this, as well as discussions about fair use in Canada, Great Britain and Japan, suggest that the rest of the world is getting the hang of fair use.  They are realizing that fair use is absolutely essential for a copyright law in the digital age, lest the exclusive rights become an economic and technological drag on a nation.  What Judge Evans decided in the GSU case was squarely in the mainstream of fair use thinking; it was even rather conservative when viewed through the lens of developing international thinking about fair use in a digital age.  If the silly misunderstandings of the 11th Circuit panel of judges lead them in another direction, it will be one more obstacle that will eventually have to be overcome to prevent cultural and economic stagnation.  But internationally, the trend is to ensure that fair use serves education and eases the transition to digital teaching and learning, a goal that at least some publishers seem to support.

A discouraging day in court for GSU

The best word to describe yesterday’s oral argument at the Eleventh Circuit Court of Appeals in regard to the appeal of the Georgia State University e-reserves decision is probably bizarre.  But that has to be qualified; they were bizarre in a very discouraging direction for GSU and fair use in the academy.

When I read the briefs for this appeal, along with Judge Evan’s massive opinion from the trial in which she developed and applied a careful fair use analysis, it was hard for me to imagine how Georgia State could lose on appeal.  The trial judge was right on both the law and the policy of copyright. But the oral arguments showed me that there was a way that it could happen — if the appellate judges got lost in the weeds and started chasing the argument down rabbit holes.  It is worthwhile, if discouraging, to peek down some of these rabbit holes because they help illuminate some of the errors the appellate panel was laboring under.

Although the tenor of the arguments was mostly hostile to Georgia State, lawyers for both sides seemed bewildered by the direction of the questioning, and neither one was able to lay out a very persuasive argument.  The day started badly for Bruce Rich, the lawyer for the publishers, when he was brusquely told to stop puffing about how important and civic-minded his clients were.  He was immediately asked to defend the injunction his clients have sought from the court, specifically because it would impose a bright-line limit on fair use.  The publishers want a definitive statement that 1000 words is the absolute maximum for fair use of their works, but the court was not buying it.  On this issue they also gave Steve Schaetzel, representing GSU, a hard time about Judge Evans’ 10% or one chapter rule, asking if that “bright line” was a legal error (which would justify reversal or remand) because it removes the flexibility from fair use.

This is a difficult issue.  It is hard to see how some standard for amount, the third fair use factor, cannot be used when examining a large group of excerpts used in the same way.  So we have to ask what kind of order do the judges want; they seem to have painted themselves into a corner on the issue of amount.  It seemed clear that they were not happy with the publishers’ proposed injunction, which was the good new of the day, but also possible that they would issue an injunction of their own, which would not be good at all.  GSU made the plausible argument that the 10% standard was an analytic tool, not a bright line, which is supported by the fact that Judge Evans did not treat it as absolute, but flexed it a bit in light of the other factors.  The judges did not seem to get that point.

Another “rabbit hole” was the issue of market harm.  One of the judges, Judge Marcus, raised the question of whether Judge Evans had impermissibly “shifted the burden” on this factor by asking whether publishers offered digital licenses.  The general rule is that defendants (GSU, in this case) have the burden of proving fair use, and lawyers and judges love to watch out for inappropriate burden shifting.  Mr. Rich was quick to agree that this was an error made by Judge Evans, but of course it is no such thing.  She simply ruled on this factor based on facts that were in the record before her.  Specifically, the publishers argued that they were losing licensing income due to the claim of fair use, so she asked if they were offering licenses.  When told that some of the plaintiffs (i.e. Cambridge University Press) were not, she properly concluded that this factor did not always favor the publishers.  But, again, time was wasted pointlessly on this, and the error that Judge Marcus was making was never cleared up.

Then there was the analogy between course packs, and the so-called course pack cases, and electronic reserves.  The publishers push this analogy very hard, and the judges seemed to mostly accept it.  This may be the worst sign for GSU.  Even when Judge Tjoflat acknowledged that he was using the language of course packs as a mere convenience, he seemed unable to get out of the way of its implications.  Schaetzel did make the point, on behalf of GSU, that e-reserves were a lot more like a traditional reserve room than they are like course packs, but the panel persisted in its error.  One difference between the GSU case and the course pack cases, of course, is the wholly non-commercial nature of e-reserves, whereas the course packs in those cases were made and sold by commercial entities.  Also, a course pack creates a physical artifact that a student can keep forever, while an e-reserve reading is ephemeral, available only during the course and inexorably tied to the specific pedagogy.  When the differences were pointed out to Judge Tjoflat, he merely switched to a hypothetical and plowed ahead, clearly trying to extract some kind of admission from Schaetzel even though that admission would be entirely irrelevant.

Perhaps the most bizarre moment in the arguments came at the very end, when Judge Marcus was pushing Schaetzel about the second fair use factor and Judge Evans’ conclusion that it favored GSU because the works in question were informational.  The Judge seemed to lose track of the fair use analysis entirely when he posed what he clearly believed was a devastating question, asking Schaetzel if The Origin of the Species, one of the most important books in science, should lose copyright protection simply because it was factual.  The confusion here is obvious.  First, The Origin of the Species has already lost copyright protection and is in the public domain, yet science still advances.  Second, all the factual nature of the book would mean, under Judge Evans’ analysis, is that the second factor of the fair use framework would be more likely to favor fair use; there is no question of “losing copyright protection” for Darwin’s book or for any of the works in the GSU e-reserves system.  Finally, the very importance of The Origin of the Species is a reason why it should be subject to fair use; it is too central to modern thought to make access to it entirely dependent on paying some publisher a fee every time even the shortest excerpt of the book is used.  That would be crippling to scientific education.

If Judge Marcus really wanted to use Darwin’s masterpiece to explore the second fair use factor, he should have asked Bruce Rich if he thought copyright protection was a major factor in Darwin’s decision to write the book.  The incentives created by copyright, of course, seldom make any difference to academic or scientific authors, who write because it is part of the advancement of knowledge.  It is comical to imagine Darwin, on board The Beagle, calculating royalties as he decides whether or not to share his insights about natural selection.  It is precisely that disinterest in the economic rewards enabled by copyright that allows academic publishers to free-ride on the system and sell works that they obtain for nothing at great profit.  The case brought against GSU is an extension of that free-riding, and a properly focused examination of the second fair use factor would have exposed it.  Unfortunately, the arguments never went there.

So what can we expect next?  It is always possible that the three judges will go back to their chambers, reread the briefs, and discover how off-the-wall their approach during the oral argument was.  So a good ruling, presumably largely affirming Judge Evans, is not impossible.  But it seems quite unlikely after yesterday.  One alternative would be for the Appeals Court to remand the case, sending it back to Judge Evans for reconsideration in light of instructions they would provide.  They could, for example, remand telling her to not use a bright-line 10% standard and not to “shift the burden” to publishers on the fourth factor.  If they did that, it is perfectly possible that Judge Evans would go back to the record and arrive at the same result; she would just have to alter the language of her analysis a bit.  Certainly if a more flexible standard for the amount used is employed, and pedagogical necessity is made the yardstick, Judge Evans might find even fewer infringements.

The more troubling possibility is that the Court of Appeals panel might reverse the lower court and issue an injunction.  It seems clear that they would not be willing to endorse the sweeping injunction that the publishers have requested. They do not want to provide prospective instructions that would remove the flexibility from fair use.  So the most likely thing, if they take this direction, is an injunction related only to the 48 excerpts analyzed in the original opinion, presumably using a different analysis and coming to different conclusions.  Such an injunction would tell GSU how to deal with those works that were actually contested at trial and then, presumably, expect GSU to “get the message” as regards future assertions of fair use without dictating prospective standards.

Perhaps the most important message to come out of this day came from the panel discussion held at GSU after the arguments.  Lisa Macklin, the Director of the Scholarly Communications Office at Emory University, who has a smart and sensible perspective on most issues, reminded us that the problem being fought over in this lawsuit would go away if the academy would more fully embrace open access.  The core problem here is the donation of copyright in academic works to publishers who then exploit them to earn every possible penny of profit.  Scholarship suffers due to the greed of these publishers (my words, not Lisa’s).  So scholarship would be better served if we stop giving the key resource of the academy away to those who are poor stewards of it.  Instead we need to have authors retain copyright and offer those authors a variety of ways to disseminate their work that better serve their needs and the interests of the scholarly enterprise.

Yesterday was a discouraging day, suggesting that storm clouds might be developing in the area of academic copyright.  But if that storm breaks, the opportunity to renew and strengthen our commitment to open access might be the silver lining we can find in those clouds.

Note — this post was updated to correct the spelling of Judge Gerald Tjoflat’s name.  Thanks to Kenny Crews for pointing the misspelling out.

A wide-angle lens on fair use

I first saw the news about Thursday’s decision affirming fair use in the Authors Guild v. Google Books case when I turned my phone back on after an eleven hour flight from Istanbul.  The Turkish Air plane was still taxiing at JFK at the time, so when I cheered out loud I got a lot of bewildered looks from my fellow passengers.  I tried to explain to the folks sitting near me what I was so elated about, but I don’t think it translated well.

Fortunately, it is much easier to explain the impact of this ruling here, mostly because so many of our colleagues stepped up to the task quite quickly.  The best thing I can do for my readers is probably simply to direct you to a few of those discussions; I especially recommend those by Kenny Crews, Nancy Sims and Brandon Butler.  There is also this interesting piece by Eric Goldman in Forbes, and this story from the New York Times.

The case, of course, has been going on for over eight years, and got very complicated when a proposed settlement, that would have imposed a sweeping revision to copyright relationships in the U.S., was proposed, revised, and rejected.  A class-action was certified by the judge, but vacated on appeal and the case was sent back to the trial court for a ruling on fair use.  For all that complexity, however, the fair use ruling seems to have been pretty easy.  Certainly Judge Chin handed down a sweeping affirmation of fair use for book scanning when the purposes of that scanning are preservation, indexing and access for persons with disabilities.  Since this parallels the decision made by Judge Chin’s colleague Judge Baer in the HathiTrust case last year, it was perhaps more predictable than many of us thought.  And, of course, there is a growing body of precedent about fair use out of not just the Second Circuit but also the Fourth, Ninth and Eleventh Circuits that all pointed Judge Chin in this direction.

What is most remarkable and valuable about this ruling is not any new ground it breaks in fair use law, but its meticulous placement of that law back where it first arose — in the issue of public benefit and the purpose of copyright.  It looks at fair use with a wide-angle lens, which helps us see more clearly the correct placement of the discussion.  Before he begins his analysis of the question of fair use, Judge Chin catalogs the benefits of the Library Project and Google Books.  That catalog includes a searchable word index of tens of millions of books that benefits libraries and researchers, the facilitation of new types of research through text and data mining, access to books for traditionally underserved populations, especially including the disabled, book preservation, and the generation of new audiences for authors as well as new income for publishers.   After he completes his four factor analysis — finding that three factors strongly favor fair use and only one, the amount used, “weighs slightly against” it — Judge Chin reiterates this list of benefits and concludes that “Google’s actions… advance the arts and sciences [and therefore] constitute fair use.”

Fair use was developed by judges over a century and a half ago to ensure that the exclusive rights in copyright did not choke off the very progress of science and the useful arts they were intended — constitutionally required, in fact — to serve.  By “book-ending” his analysis, as one of my colleagues expressed it, with the public benefits of Google Books and the purpose of copyright, Judge Chin has created a powerful context for his ruling and an important reminder for all of us of what this odd body of law is really for.

In this context, it is very easy to see how selfish and myopic these lawsuits against libraries (in the broadest sense, since the decision in this case focuses a lot on the benefits of GBS to libraries) really are.  The Authors Guild is really asking the courts to forget about students, researchers, blind people, poor people and even the very authors they are supposed to represent in order to preserve some notional expectation of a windfall profit that might be discovered someday when they finally figure out the internet.  As Brandon Butler puts this point, “There is no pot of gold at the end of these lawsuits, and the research tools they are trying to kill are their best hope of finding an audience.”  I am reminded of Aesop’s fable about the dog and his reflection, where the greedy dog with a bone sees his own reflection in a stream and, trying to snatch the bone away from the “other” dog, drops what he already has into the water.  Increasingly the Authors Guild, as well as the publishers in the Georgia State case, look a lot like that greedy and foolish dog.

The Authors Guild has already announced the mind-bogglingly stupid intention to appeal this case.  After eight years of pouring money into it, failing to find the pot of gold they hope to gain from a settlement, and losing on the key legal principle they were fighting for, the AG apparently has learned nothing.  But the chances of a reversal on appeal seem very slim.  Judge Chin’s analysis is tight and firmly grounded in the fundamentals of copyright law.  It is supported by a rapidly growing body of precedent and it parallels another decision made in the same Circuit last year.  Finally, it grows out of a remand, from the same panel that will hear any further appeal, that clearly communicated the belief of those judges who sent the case back that fair use applied to Google Books.  In that remand, the judges who were asked to rule on the issue of class certification sent the case back (without a decision about the class action) with instructions to consider fair use.  Had Judges Laval, Parker and Cabranes not thought that a finding of fair use, which would make the class question irrelevent, was likely, this would have been a futile waste of judicial resources, something overworked federal judges avoid like the plague.  So there is already very strong reason to think that the AG’s appeal will fail.

Finally, in spite of my remark about there being little in this decision that is very new, I think there are two important conclusions that we can take from this ruling.  First, it is a reminder that the commercial nature of a user does not automatically rule out fair use.  In his decision, Judge Chin properly focuses on the use, which has tremendous public benefits and which does not directly generate a profit, rather than the user.  In the context of the educational benefits of the Book Search, the fact that Google is a for-profit company is really trivial to the analysis.  Second, the decision provides an important perspective on mass digitization.  Rights holders often focus on the scale of a project and assume that large-scale reproduction cannot be fair use.  This is the core of the publishers argument in the Georgia State appeal, and it is wrong.  Both Judge Chin and Judge Baer have now concluded (and Judges Laval, Parker and Cabranes have strongly hinted their agreement) that even massive digitization, when it is done for a transformative purpose, can be fair use.

 

What’s up?

Is it just greed?  Is that what is behind the lawsuit over e-reserves and copyright infringement that publishers continue to pursue against Georgia State University?

Yesterday Publishers Weekly published a short item reporting that the Copyright Clearance Center, which is helping to bankroll the GSU lawsuit, paid out a record amount of royalty monies to rights holders in the 2013 fiscal year. Royalties paid by the CCC have increased by more than $35 million in the past three years alone.  So why the lawsuit? This news calls into question the motivations of Oxford University Press, Cambridge University Press and Sage Publishing, who continue to pursue a feckless and wholly unnecessary attack on higher education.

Usually one hears two different explanations for this lawsuit.  One is that publishers just want clarity about fair use.  The other is that permissions income is vital for the survival of academic publishing.

To start with the first claim, it seems to have gone out the window once the plaintiff publishers decided to appeal the decision by Judge Evans in the District Court.  In that decision, Judge Evans laid out very specific rules about fair use as it applies to e-reserves in a non-profit educational institution.  If clarity was what was being sought, the Judge’s 350 page decision provided it.  In fact, my own objection to that ruling is that it went too far in removing the flexibility of fair use, at least for the situation that was before the court.  On the other hand, the publishers did not like it because it was not rigid enough; they did not simply want clarity, they wanted fair use rendered toothless.  And since the Judge did not do that, but merely provided the kind of guidance the publisher claimed to be seeking, they chose to appeal her decision.

The second claim for why this lawsuit was needed does not fare any better.  In her trial court decision, the Judge held that revenue from permissions was not a significant part of the value of most of the academic books at issue, and the publishers complained loudly about that holding, saying that “publishers cannot sustain the creation of works of scholarship” without increasing revenue from licensing.  First of all, academic publishers do not “create” works of scholarship, nor do they pay those who do create them, most of the time.  So it is hard to see why that ever-increasing income stream is really so necessary.  But now we learn that that revenue stream is growing, at a very nice rate, thank you very much.  The picture painted by CCC’s announcement, as reported by Publishers Weekly, is of a system that is working quite well for publishers.  If the revenue from licensing must go up for academic publishing to survive, as publishers claim, well, it is.

So how much is enough?  I have always believed that behind this lawsuit is a belief that copyright exists so that rights holders, who most often are intermediaries and not the original creators, can extract every conceivable penny from every use of every copyrighted work.  From that perspective, fair use is a gigantic mistake and these revenue figures from the CCC are irrelevant.  But that is not the purpose of copyright law.  The copyright monopoly exists to give an incentive to authors and creators to continue writing and creating.  Since very little of the $188.7 million that the CCC distributed to rights holders in FY 13 actually goes to creators, it is deadweight loss, in economic terms, as far as the incentive purpose of copyright is concerned.  And it raises the question of how much income is enough; how much inefficiency in the system is required before these publishers will be satisfied?

I am looking forward to the oral arguments for this appeal on Nov. 19, and I hope the judges on the appellate panel are well-enough informed and savvy enough to ask that question of the lawyers for Oxford, Cambridge and Sage.  The Eleventh Circuit should demand, just as Judge Evans did, to see the books for these companies (including the CCC) and to make an independent and common sense decision, guided by public policy and sound economics, about what a sensible profit really is.  Because it is very clear that the plaintiffs will never admit that they have squeezed enough money out of higher education in the United States.

Public art and fair use

A couple of week’s ago I was asked a question that set me thinking and required a bit of research.  That is hardly post-worthy, but when a case came down that addressed the same issue I had been thinking about, it suddenly seemed worth discussing.  It provides an opportunity to dissect an issue, remind ourselves of things we already know, and also explore the continuing evolution of fair use decisions from our courts.

The question involved the use, in a planned publication, of a photograph of a piece of public art.  In Durham we have several murals, painted on walls in public spaces, of Pauli Murray, one of our prominent citizens.  Rev. Murray was a civil rights activist, a women’s rights activist, and the first African-American women ordained as a priest in the U.S. Episcopal Church.  But could an author use a photograph of one of those murals in an upcoming article?

Of course, the first thing that comes to mind is that there are likely two sets of rights to be aware of here — the artist’s and the photographers.  In this case, however, the photo was take by the author of the publication that was in preparation, so the issue was focused on the scope of the artist’s rights.

Does it matter that this work of art can be seen by people walking on a public sidewalk or through a public park?  I knew, for example, that that fact did matter when the subject of the photography was a building.  In 1990 Congress added section 120 to our copyright law which permits “pictorial representations” of an “architectural work that has been constructed” as long as the building in question is “ordinarily visible from a public place.”  These pictures can be made, distributed and publicly displayed without the need to obtain permission.  But a quick look at section 120 reminded me that it is quite specific to architectural works; it does not tell us anything about the situation for a work of visual art that is painted on to the side of such a building or otherwise placed in a public spot.

Next up in my mental queue was an older case (with the great name of Letter Edged in Black Press v. Public Building Commission of Chicago) that involved the immense, untitled Picasso sculpture that is installed on the Civic Center Plaza in Chicago. But interesting as that case is, it is not applicable to the situation I was looking into.  The case was decided in 1970, so it was based on the provisions of our older, 1909 copyright law.  In the specific circumstances, a federal court held that the Picasso sculpture was in the public domain because all of the publicity around it had amounted to “publication” without copyright notice.  Under the 1909 law this put the work in the public domain.  But that is no longer the case under the newer Copyright Act, which replaced the 1909 law on January 1, 1978. So the “Chicago Picasso” case did not answer my question either.

Ultimately, the answer comes down to this — copyright is automatic when the work of art is “fixed”, including by being painted on a wall, so the artist holds a copyright in this mural.  Simply painting it in a public place does not make it public domain or give people any license to make use of it (other than by viewing it, of course).  There is no specific exception that would apply to use of a photograph of this type of art.  When we have exhausted those options — public domain, a license, or a specific exception — we are left with two more possible grounds for using a work, fair use or permission from the rights holder.

Which gets me to the recent case, which actually involved very similar circumstances — reuse of an image of an artwork painted on a publicly visible wall.  In this case, the artist was Derek Seltzer and a copy of his poster called “Scream Icon” was on a wall in Los Angeles that was part of a video used as backdrop for live concerts by the band Green Day.  In an opinion last month, which can be found here, the Ninth Circuit Court of Appeals affirmed a lower court ruling that this use of the poster was fair use.  The Ninth Circuit panel found that Green Day’s use of the image, which was in a context created by other posters and graffiti on the wall and was used to convey, the Court said, a very different (and much clearer) message than the original poster, was transformative:

[the] video backdrop using ‘Scream Icon’ conveys new information, new aesthetics, new insights and understandings that are plainly distinct from those of the original piece.

The Court went on to hold that the creative nature of the work weighed slightly against fair use, and that the use of the entire poster was neutral, since the poster could not be separated from its context on the wall.  Finally, they ruled that there was no impact on the potential market for or value of the poster caused by Green Day’s fleeting use of it in a video backdrop.  They also held that that use was only “fleetingly commercial” because the video (and the poster) was not used in any way to market Green Day’s concert tour.

It is interesting that the Ninth Circuit panel said that this was a close case (and reversed a grant of attorney’s fees to Green Day because of that).  In many ways it seems like a pretty clear case of transformative fair use, and one for which there is precedent.  In the Second Circuit a very similar case involving use of copyrighted visual material during a live performance was decided about six months ago, also in favor of transformative fair use.  The case was called SOFA Entertainment v. Dodger Productions and involved a seven second video clip from the Ed Sullivan Show shown on a screen at the end of the first act of the Broadway show Jersey Boys.  The Ninth Circuit cited  SOFA Entertainment, but seemed to feel that the case for transformative fair use regarding the poster was closer.  On the one hand, of course, the use is much more ephemeral, but perhaps the Seltzer court felt that the “biographical anchor” which the SOFA court found in the use of Ed Sullivan in a show about the Four Seasons was lacking for Green Day.  And maybe they just wanted to reverse the grant of attorney’s fees to the band, feeling that it was unfair to Mr. Seltzer.

All of this reminds us that the analysis of transformative fair use, while very useful for both creative artists and scholars, is evolving territory.  In fact, the Ninth Circuit panel noted this themselves when considering the issue of attorney’s fees, but also saw in this case a convergence between themselves and the Second Circuit on the other coast. Fair use is always extremely dependent on the specific facts and circumstances related to the particular use of particular material.  Reading these case decisions continues to give us additional data points to guide our analysis, but we never arrive at a finished picture.

So what about the photograph of that Pauli Murray mural in a scholarly article?  If we look at the fair use argument as it is developed in these cases and many others — especially the language quoted above about new meanings and new insights — the use of that photo is probably fair use.  But there was also some realpolitik in my answer to the inquiry.  The artist who painted those murals is known, still working, and easy to contact.  Scholars working on the life and impact of Pauli Murray may want to make later uses of these works dedicated to her.  So why not ask? Especially because this is a clearly non-profit, scholarly use that will, like the murals, honor the memory of a remarkable women, the artist has every reason to grant permission.  Asking permission, we know, does not prevent a later reliance on fair use, but in some cases it seems like an easy and respectful way to proceed even when fair use would likely also support the use.

Feelin’ stronger every day

I don’t mean this to sound vindictive or smug, but the publisher John Wiley keeps filing, and losing, lawsuits intended to enforce ever-stronger copyright claims, that, in the outcome, can only be encouraging to those of us who seek a more balanced law that both protects copyright holders and supports reuse rights.

Wiley was the plaintiff is the case recently decided by the U.S. Supreme Court that held that the doctrine of first sale applied, in the U.S., to any lawfully made work, regardless of the place of manufacture.  Wiley, of course, wanted the Court to limit first sale to works manufactured in the U.S. so it could choke off second-hand sales, at least for textbooks, but instead clarified the law in exactly the opposite direction. And then, in another set of cases, Wiley, joined by the American Institute of Physics, filed three different lawsuits, in different jurisdictions, alleging that law firms that filed copies of scholarly articles as disclosures of “prior art” with patent applications were infringing copyright if they did not pay for licenses for each article.   The two losses they have recorded thus far in those cases are more evidence of the robust notion of fair use our courts are developing for the digital age.

In one of those lost cases, in Northern District of Texas, the judge dismissed the case on summary judgment back in May, holding that fair use protected the challenged copying and distribution.  But that decision was announced from the bench, and as far as I know we do not have a written opinion yet that we can parse to see how it might apply in other situations.

Late last month, however, the other court in which such a lawsuit was filed did issue an opinion.  Actually, a magistrate judge assigned to consider the case by the federal district court in Minnesota issued a “report and recommendation” that strongly supports fair use for the situation in question.  It also offers an analysis that could easily provide an analogy to activities in higher education, including the e-reserves system that is being challenged in the Georgia State University lawsuit.

It is worth spending some time looking at the report and recommendation of the Minnesota magistrate.  His basic recommendation is that the suit be dismissed on summary judgment because the challenged use of copyrighted articles is fair use.  Apparently because of the North Texas case, Wiley had pared back its claims, allowing that the actual filing of articles with a patent application, and a single copy retained by the law firm in its case file, was fair use.  But if Wiley thought that this common sense concession would allow it to force firms that did more, such as maintaining a database of articles for its attorneys or sending copies of articles to clients, to pay licensing fees, it was badly mistaken.  The Magistrate Judge’s recommendation is a sweeping assertion of fair use, and there are four aspects of his analysis that I want to highlight.

First, and perhaps most importantly, Judge Keyes asserts that the use made by Schwegman, Lundberg & Woessner, the law firm that was sued, is transformative.  He finds transformation in the use of the articles in question for a different “intrinsic purpose” than that for which they were published:

This conclusion does not change merely because the “copying” Schwegman engaged in did not alter the content of the Articles.  That lack of alteration may make the label “transformative use” a messy fit… But reproduction of an original without any change can still qualify as fair use when the use’s purpose and character differs from the object of the original, such as photocopying for use in a classroom.

In reaching this decision that Schwegman’s purpose in using these articles, which was to comply with government requirements, to compare the invention to “prior art,” and to represent its’ clients interests, “did not supersede the intrinsic purpose of the original,” the Judge also stated a case for why the copying at issue in the Georgia State e-reserves case can similarly be viewed as transformative.  Indeed, he made that point explicit, since teaching is a different “intrinsic purpose” than that for which they were written and published, which the judge said was to inform the scientific community of new research  and allow for the testing of methods and conclusions.

Next, the Magistrate Judge directly refuted the claim by the two publishers that the Texaco case, which refused to allow fair use for copying within the research arm of a commercial company, should also be applied to reject fair use for this law firm (which is, of course, a commercial entity).  Here again the Judge made a careful distinction between the purpose that was rejected in Texaco and the purpose for which Schwegman was making its copies:

Here, there is no evidence that would allow a reasonable jury to conclude that Schwegman is similarly [to Texaco] maintaining mini-research libraries so that it can avoid paying for separate licenses for each of its lawyers, thereby superseding the original purpose of the Articles… the evidentiary character of Schwegman’s copying differentiates the firm’s use of the Articles from the Articles’ original purpose.

At this point as well as others, this recommendation undermines a central claim of the publishers in the Georgia State case.  Just because a licensing market exists, and the use to which the excerpts from published works are put therefore saves the users some money, that does not undermine fair use, Judge Keyes tells us, when the purpose of the use is intrinsically different from the original purpose.  If the Eleventh Circuit Court of Appeals applies this type of reasoning in the GSU appeal, we could see an even broader fair use ruling in Georgia State’s favor than we got from the District Court.  No guarantees, of course, that the Eleventh Circuit will take this approach, but this analysis in the Schwegman case is one more support for that possibility.

Several times in his report, Judge Keyes points out that the loss of licensing fees would have no impact at all on the incentives that scholarly authors have to write the articles that are at issue in the case.  This incentive-based approach is the right one to take, in my opinion, since it looks at exactly the question copyright law should be focused on — what is needed to ensure the optimal level of ongoing creation and innovation.  Since scholars do not get paid for their scholarly articles, and any small amounts that may trickle down to them from licensing fees are irrelevant to the decision to report on their work, the Judge says that the fact that “the Publishers may have lost licensing revenue from Schwegman’s copying is not determinative and does not create a fact issue for trial.” I have italicized the last part of this sentence to emphasize that Judge Keyes does not think this is a hard case or a compelling argument, since the standard he is applying, in recommending summary judgment, is whether any reasonable jury could find otherwise.  He believes they could not, given the facts that surround scholarly communications today.

Finally, there is a fascinating part of this recommendation that points out, I think, what good citizens libraries really are in the copyright realm.  The law firm, you see, could not account for where it obtained the original copy of some of these articles, so the publishers argued that this lack of an authorized or licensed original should defeat fair use, alleging “bad faith” and citing the Harper & Row case.  But without evidence of actual piracy, the Judge rejects this claim and holds that no reasonable jury could find that there was bad faith by Schwegman that would prevent a holding of fair use.  I find this important because most academic libraries either do own purchased copies of the books they excerpt for e-reserves or make every attempt to obtain them if a request is made for a book the library does not already own. I am frequently asked by librarians how hard they should search for a copy to purchase.  I believe this is a good practice, for both copyright and pedagogical reasons, but the Schwegman case is a reminder that by doing this we may be going beyond the absolute requirements of a fair use argument.  The fact is that, in spite of some over-heated rhetoric from the publishing industry (a former president of the AAP once called all librarians pirates), libraries try hard to be good citizen and to respect the appropriate boundaries of copyright.  What is causing problems these days is the publishers’ deep fear of the digital environment and their efforts, in response to that fear, to push the boundaries of copyright further and further, even to the point that its justifying purpose of supporting authorship and innovation is undermined.

The Schwegman report is just that, a report and recommendation.  It remains to be seen if the District Court judge responsible for the case will adopt it or not.  But the fact that it is out there, and is so supportive of a fair use argument that would allow and endorse library practices that the publishing industry has challenged, is another data point for our consideration.  It serves as a reminder that the key to finding favor in the fair use analysis is to be doing something the court believes is important and beneficial.  When we make limited copies to teach our students and support our researchers, we are on the side of the angels, and we continue to get these examples that must, over time, accumulate into a body of support for library practices.  It is the publishers like Wiley, who are in the position of asking courts to stretch copyright law solely to support new income streams, that are and will continue to be, in spite of their offensive strategies, always on the defensive.

Parallel tracks, parallel successes

The two lawsuits currently going on that involve the scanning of books for the Google Books project, one against Google directly and the other against the HathiTrust, raise very similar issues.  In both cases, the two major issues are fair use and the posture of the plaintiffs who are bringing the cases in the first place.  The Authors Guild is now the major plaintiff in both cases; they are the only plaintiff left in the case against Google because the Association of American Publishers settled out of it, and the AG brought the case against HathiTrust by itself in the first place.

Yesterday the Second Circuit Court of Appeals issued a ruling in the Google Books case that takes an important approach to the issue of how fair use and the “standing” question (who can bring a lawsuit and in what position they stand) are related, and it reminds us of the parallel tracks along which the two cases seem to be moving.

As many will recall, the Google Books case has been going on for a very long time.  There was a complicated settlement agreement proposed back in 2009, but it was ultimately rejected by Judge Denny Chin.  Since then the AAP has gotten out of the lawsuit, and it has gone to trial with only the Authors Guild as the lead plaintiff against Google, asserting copyright infringement.  Early in that trial, Judge Chin (who is continuing to act as the trial court judge for this case even though he has since himself been appointed to the Second Circuit Appeals Court) “certified a class” for the purposes of allowing the case to be a class action lawsuit.  Because it was not at all clear that the plaintiffs in the case really do represent all authors, or even a majority of authors, Google appealed this class certification

In its July 1 decision, the Court of Appeals held that their colleague was “premature” in certifying the class.  They said that the trial court should consider the fair use issue that defendant Google had raised prior to determining class action status.  There are news reports from Reuters and the NY Times on this stage of the case.

What makes this so important is that class action certification can really be the end of a case for practical purposes.  The process of litigating a class action is so complex and expensive that class action certification is often a signal to the defendant to settle the case.  The result is that, if a class is certified, there is much less chance that a full determination about fair use will ever be made.  In this case, the fair use argument is very strong, and virtually identical issues were decided in favor of fair use at the trial level of the HathiTrust case.  So it would be very unfortunate if the Google case never got to that stage.  By fighting off the class certification, Google has won for itself a better opportunity to make that argument.  And the precedent set by this decision is important, since it tells trial courts to consider fair use before they make the potentially destructive decision about class certification.  In many cases, and the Second Circuit suggests that this may be one of them, the complexity and cost of a class action might be entirely avoided because fair use would lead to a lawsuit being dismissed before it got that far.

One interesting note is that Judge Pierre Leval was part of the Appeals Court panel that made this ruling.  Judge Leval wrote the famous law review article called “Towards a Fair Use Standard” that is the foundation of the recent stress on transformative uses in the fair use context.  Now, as part of this three judge panel, he has sent back to the trial court a case where the fair use standard he suggested is very, very applicable.  So we will see if Judge Chin takes the strong hint that he has been given by his Second Circuit colleagues (including Judge Leval and the rest of the appellate panel, as well as Judge Harold Baer, who ruled in favor of fair use in the HathiTrust case) and finally dismisses this case on fair use grounds without letting it grow into a class action.

As I said, the issue of whether or not the Authors Guild can really adequately represent the class of all authors is also very important.  Their membership is quite small – apparently less than 10,000 people – compared to all of the authors in the United States, and the interests they represent are even narrower.  They seem to focus on the need to protect every copyright for ongoing and exclusively commercial exploitation, in blissful ignorance that many, probably most, authors do not make any significant income from writing and often feel that exposure and impact are far more important incentives for authorship.

It is on this point that yesterday’s decision so clearly shows us that the Google Books and the HathiTrust lawsuits are on parallel tracks.  Late last year the trial court in the HathiTrust case made two important rulings.  The first was that the activities of the HathiTrust that had been challenged were fair use.  The second was that the Authors Guild could not assert “associational standing” to bring the case.   Now the Appeals Court has sent the Google Books case back to the trial court for consideration of the fair use issue and reconsideration of the association’s standing (in this instance, whether it is an adequate class representative).  On this second point the panel said that it did not have to decide the issue of adequate representation because a fair use decision might well moot the class action issue, but it indicated that the argument that the AG was not inadequate as a class representative “may carry some force.”  Now we might see a situation in which the Google case is resolved the same way the HathiTrust lower court case was – the activity is fair use and the Authors Guild is not a proper party.

It would be nice if the Authors Guild took this ruling as an opportunity to back out of the case.  But they have already appealed the HathiTrust verdict, and there is little reason to suppose that the AG will suddenly be seized by a fit of good sense.  So we must watch these lawsuits, brought out of a misplaced desire to force copyright to be something it is not and never was intended to be, get decided step-by-step in favor of fair use.  This latest decision, which will compel courts to consider fair use at an earlier, and potentially less devastating, point in a putative class action is, as they say, “another brick in the wall.”

Of fences and defenses

It is very common to hear people say, in a discussion of copyright, that fair use is “an affirmative defense.”  One of the amicus briefs filed in the Authors Guild’s appeal of the favorable fair use decision in their lawsuit against the HathiTrust, however, puts that common assertion into question and raises an argument worth considering.  The brief on behalf of the HathiTrust that was filed by a group of universities (Illinois, Michigan State, Minnesota, Nebraska, Northwestern, Penn State and Purdue) argues at some length that fair use is not and was not intended as an affirmative defense but is better viewed as a positive limitation on the rights held by a copyright owner. They argue, in short, that fair use is not so much a defense as it is a fence — a boundary that courts have built to prevent the exclusive rights in copyright from expanding too far. (Hat tip to Jack Bernard of the University of Michigan, who pointed this argument out to me but is not, of course, responsible for what I make of it).

To understand this argument, and to see what difference it makes, let’s start by defining an affirmative defense.  Black’s Law Dictionary tells us that an affirmative defense is “an assertion by a defendant that raises new facts and arguments that defeat the plaintiff’s claim even if all of the allegations in the complaint are true.”  When one raises an affirmative defense, one basically says that “even if I did exactly what the plaintiff says I did, I should be excused because of these additional reasons which justify my actions.”  Self-defense is a classic affirmative defense, as is duress.  In the latter case, for example, someone charged with writing a fraudulent check might say “yes, I signed that check knowing it was a fraud, but at the time I was being threatened at gunpoint if I did not do  so (i.e., I was under duress).”

It is easy to see why fair use seems like an affirmative defense; the general assumption is that a defendant in a copyright infringement lawsuit admits, when raising fair use, that they were responsible for the use being challenged, but that that use was authorized by the law under section 107 of the Copyright Act. Well-known copyright scholar William Patry takes exactly this position in a 2005 blog post, although he also adumbrates the argument that the amici universities are making in the HathiTrust brief.

The “public relations” problem with this position is that talk about affirmative defense is often used to frighten potential users of copyrighted works away from their proposed use by telling them that if the copyright holder objects, they will have to “prove” fair use, which is difficult and expensive.  The legal problem with maintaining that fair use is an affirmative defense is found in that word “prove” — the HathiTrust amici maintain that, because fair use is NOT an affirmative defense, the burden of proof shifts to the plaintiff, who should be required to prove that the use in question violates their rights.

Burden of proof is very important in most litigation.  We all know that in a criminal trial, it is the state which must prove “beyond a reasonable doubt” that the defendant committed the offense.  In a copyright infringement case, which is usually a civil trial rather than a criminal one, the standard of proof is lower — usually infringement must be proved by “a preponderance of the evidence.” Here is how the jury instructions for the federal courts in the Ninth Circuit describes this requirement:

the plaintiff contends that the defendant has infringed the plaintiff’s copyright. The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of the copyright and that the defendant copied original elements of the copyrighted work. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the copyrighted work was infringed.

If fair use is an affirmative defense, the burden of proving those additional facts that would establish the defense falls on the defendant.  She has to show that her otherwise infringing use was authorized by the law.  But the HathiTrust amici argue that that is not how fair use works.  They suggest, based on language in the statute, that fair use is about establishing the plaintiff’s right in the first place, so that the burden falls on that plaintiff to show that they have any right to prevent the particular use.

This is the difference between admitting the plaintiffs’ assertions and then arguing that there was a justification for the otherwise infringing activity versus denying that plaintiffs’ basic claim that they hold the right to object to the use in the first place.  It is an argument that fair uses simply fall outside of the scope of the copyright holders authority in the first place, 0n the other side of a statutorily-defined “fence.”  Then it becomes that copyright holders’ obligation to convince the court that their rights DO reach as far as they say they do.

As I said, the HathiTrust amici assert that the language of the copyright law supports this argument.  The section that enumerates the exclusive rights in copyright is immediately followed by a series of limitations on those rights, and fair use is the first of these limits.  The fair use provision says that a fair use “is not an infringement,” “notwithstanding” the rights granted just one section earlier.  This sounds like the scope and extent of the rights are being defined.  And just one more section later the law refers to “the right of fair use,” language that further suggests that fair use is much more than a defense.  Indeed, it looks like Congress was telling us that fair use is a positive right, the existence of which defines the inherent limits of the rights given to copyright holders.

By the way, this perspective is also useful in thinking about the publisher arguments in the GSU lawsuit.  The publishers’ reply brief in that case, about which I wrote a couple of weeks ago, asserts that those who claim fair use have”the burden of demonstrating the limited nature of the unauthorized use.”  Not only is there no such requirement about fair uses being “limited” in the legislative or judicial definition of fair use, but this assertion potentially gets the burden of proof wrong.  It is the plaintiff publishers, according to this perspective, who must show that the use in question is not fair use and therefore that they are entitled to assert any control over it.

If these seven amici universities convince the Court of Appeals panel, it will make a big difference in how the arguments proceed.  Since plaintiffs must first, as everyone agrees, show that they own a right that has been infringed, this argument would mean that it was up to them to convince the panel that the use was not fair use as part of that initial showing.  But it could be even more influential on the “public relations” issue I spoke of.  If we understand fair use as a positive right that creates a boundary limiting the control of rights holders, we ought to be less afraid of exercising it.  After all, we do not fear to walk on a public sidewalk just because some landowner might scream “trespass;” we recognize that rights over land have boundaries and do not shirk from exercising our positive right to use public land.  The argument in this amicus brief points us to a similar confidence when exercising our fair use right.  While we should respect the legitimate rights held by an intellectual property holder, we should not let attempts to expand those rights beyond the boundaries set by Congress dissuade us from making fair use of materials under this public right that is equally a defining part of copyright.

Time for breakfast at the 11th Circuit

In Alice in Wonderland, the White Queen chides Alice about her professed inability to believe unbelievable things, suggesting that it is just a matter of practice.  Because of her own discipline in practicing this art, the Queen is able to assure Alice that “sometimes I’ve believed as many as six impossible things before breakfast.”  Lawyers, of course, have to be skilled at making arguments even for implausible positions, but the reply brief filed in the GSU copyright infringement appeal last Monday would challenge even the White Queen’s gullibility.

In this brief the plaintiff publishers are attempting to respond to the arguments made in the last round of filings by Defendant Georgia State University and the “friends of the court” who argued on its behalf.  This is essentially their last shot at convincing the judges that they should reverse the decision of the trial court that largely ruled in favor of fair use.  Unfortunately for the publishers, it is not very convincing.

The core argument of this brief is one the publishers have been making, unsuccessfully, throughout the case — that the so-called “course pack” cases from two decades ago are absolutely dispositive in this case and render incorrect all of the fair use analysis done by Judge Evans in her comprehensive ruling at trial.  Some of this argument is based on misdirection, wherein the publishers argue that the judge was treating digital formats differently from print.  She did no such thing, of course; she distinguished the situation before her from the course pack cases because the facts were different.

The publisher  do address the distinction more directly, however, when they argue that GSU’s non-profit status is (for obscure reasons) not relevant to the fair use analysis.  Of course, the course pack cases explicitly rejected  fair use precisely because the defendants were commercial entities who were selling the course packs to students.  In the GSU case, on the other hand, the university is non-profit and the readings are made available at no charge.  It is absurd to say that this difference doesn’t matter.  In fact, at least one publisher I have dealt with granted gratis permission for an excerpt on e-reserves only after I assured them that no charge was made to students.  So even publishers understood that this was a crucial fact in determining the appropriateness of unlicensed uses in academia, before their lawyers told them they had better deny it.

From this basic assertion that the matter was already settled by different courts back in the 90’s, the publishers proceed to explain that the trial court was wrong on every one of the four fair use factors.  Much of the argument is very strange, twisting back on itself in an effort to obscure the clear and cogent path that Judge Evans used to arrive at her original ruling.  Its overall effect, however, is to emphasize what a sensible, careful analysis that trial court opinion offers.

It is, perhaps, worth looking at some of the general statements made in the opening summary of the brief’s argument to find some clues about how this analysis went so badly wrong.

First, of course, is this assertion that fair use is not supposed to favor non-profit educational uses.  We have heard this complaint many times over the long course of this cases, but here is last week’s version of it:

To sanction GSU’s practices under the rubric of fair use on the grounds urged by Appellees — GSU’s non-profit status and the importance of Appellants’ work as teaching tools — would undermine fundamental tenets of copyright law by effectively dedicating the works of scholarly publishers to the public domain. (emphasis added)

This is truly a staggering bit of argumentation.  First, a non-profit purpose is specifically mentioned as favoring fair use in the text of section 107 itself, so it is hard to see how it could NOT be an appropriate part of a fair use argument.  And a quick look at all of the exemplary purposes for fair use that are also mentioned in section 107 should convince any unbiased reader that social utility — the importance of education, for example — is the fundamental purpose for which fair use was created.  Indeed, courts have told us this over and over.  So the rubric suggested as inadequate is, in fact, a nice, concise statement of why the original ruling in this case was correct.  And then, the grotesque hyperbole that follows illustrates for us that the lawyers writing this brief know how far out on a limb they have climbed.  To say that a fair use finding effectively dedicates a work to the public domain is simply absurd.  I do not think the publishers could cite a single instance where fair use has had that effect, where the original became unmarketable because someone made a fair use of a portion of that work. When movie companies challenged the video recorder, for example, by saying that it would destroy the movie industry, they were making a parallel, and equally silly, claim; home video recorders, of course, did not harm the market for movies at all, even though entire films could be recorded under the Supreme Courts ruling on fair use.

And of course, we should not ignore that phrase “the works of scholarly publishers.”  Throughout this brief the publishers are not sure whether they are arguing for their own profits or on behalf of authors.  Sometime they throw the authors in to their argument, but mostly they want the court to believe that they, the publishers, actually created the works in question ex nihilo.  But none of these works were created by publishers, and their argument collapses when we realize that the fees they are seeking have virtually no role at all in incentivizing scholarly creation, which is what copyright is for. More about this in a minute.

But before we leave fair use proper, we should also examine this gem: “Fair use … imposes on the proponent of fair use the burden of demonstrating the limited nature of the unauthorized use …”  There is no such requirement in the text of the law, of course, and the Sony case about VCRs illustrates, at the highest level of U.S. legal precedent, that simply because a practice is widespread does not prevent it from being a fair use.

To return to the issue of incentives, let’s look at one more passage from the preliminary statement in this brief:

This blatant end-run of copyright law not only threatens to undermine the established legal norms that have long governed course-pack copying, but it comes at a time when Appellants and other academic publishers are investing heavily in publishing and delivering content in digital form.  These publishers cannot hope to recoup their investment if institutions like GSU are permitted to make exact digital copies of their works … without compensation to the works’ authors and publishers.

The first part of this quote is, as we have already seen, irrelevant; a fair use ruling in the GSU case would not alter the precedent created by the course pack cases, when those cases are properly understood.  But the second part is also interesting, and it echos an earlier statement, quoted from one of those course pack cases, about how publishers have “risked their capital to achieve dissemination.”  By way of reply, we should note first that dissemination is quite different now than it was nearly twenty years ago when that case was decided.  Many  Gold OA journals and other forms of digital writing can be distributed with much less expense than these traditional publishing houses claim is required.  So we are entitled to ask if it is being done efficiently by them; whether that capital the Court is asked to protect is being invested wisely.  And in any case, copyright law is not designed to support any particular business model, but to give creators more reason to create.

Given these statements, the Appeals Court would be justified, I think, in asking the plaintiffs to open the books and show how much investment is being made, how it is being spent, and how dependent that investment really is on permission fees.  The trial judge did not think those fees mattered all that much to publisher revenue.  If the plaintiffs continue to assert that their business will be ruined by fair use, they should be obligated to prove it, and also to show that the threat is systemic and not just the result of poor management.

Finally, it is worth noting that authors have now appeared in the argument.  Whereas earlier the issue was “the works of scholarly publishers,” now, in classical fashion, the authors have been belatedly recalled and tossed in to the mix.  Publishers have made pathos-filled appeals on behalf of starving authors in order to justify their own businesses since copyright began.  But academic authors are different, so this reflexive reference to authors should not go unchallenged.  In response to this argument, there are two questions the Court of Appeals should examine closely.  First, how much money actually makes its way into the hands of authors, rather than the publishers, from permission fees paid to the Copyright Clearance Center?  Second, what role, if any, do these fees play in creating the incentive that academic authors have to create scholarly monographs, recognizing that all of the books in question in this lawsuit are such monographs, rather than textbooks.  These questions are perfectly within the competence of the Court of Appeals, both because they are relevant to the second fair use factor and because the publishers’ reply brief has put them at issue.

Th Eleventh Circuit Court of Appeals is asked to swallow lots of unbelievable things in this reply brief.  Now is the time for them to sit down at the metaphorical breakfast table (harkening back to the White Queen) and demand substantive information from the plaintiffs before they finish this meal.