FAIR USE

A. THE DOCTRINE AND ITS ENACTMENT

Fair use is a limitation on copyright protection that acknowledges that not every secondary use is an infringement upon an owner’s exclusive statutory rights.¹²³ Consistent with the idea of copyright’s social bargain, the doctrine permits a user to appropriate elements of a copyrighted work without express permission, in recognition that new works necessarily draw on old works.¹²⁴ Fair use enables the creation of new works that surpass the original work, augmenting our culture and our knowledge in a manner that the original does not.¹²⁵ By refusing to label a transformative¹²⁶

121 In addition, documentarians themselves benefit from the same copyright protection that creates their own clearance headaches. In recognition of this, they tend to acquiesce in the face of a rightholder’s demands, as they recognize the possibility of a situation where the shoe could be on the other foot. See AUFDERHEIDE &JASZI,UNTOLD STORIES, supra note 49, at 22-23.

122 Copyright Act of 1976, 17 U.S.C. § 107 (2006).

123 See Forkner, supra note 6, at 722-23.

124 Jeannine M. Marques, Fair Use in the 21^st Century: Bill Graham and Blanch v. Koons, 22 BERKELEY TECH.L.J. 331, 334 (2007).

125Id. at 332.

126 “Transformative” joined the lexicon of fair use decision-making in Campbell v. Acuff Rose-Music, Inc., 510 U.S. 569, 579 (1994), and means a use that “adds something new, with a further purpose or different character” so as to

appropriation an infringement, fair use furthers Lessig’s “Progress Clause”

by placing the economic benefits copyright confers upon creators beneath the primary Constitutional goal of maximizing dissemination of new works for the greater benefit of the general public.¹²⁷

Fair use is part of a web of doctrines which restrains copyright’s monopolistic tendencies: the limited term of exclusive rights encoded in the first Copyright Act; the idea-expression distinction, which denies protection to an idea, and only confers copyright on the expression of that idea;¹²⁸ the refusal to recognize facts as falling under the subject matter of copyright;¹²⁹ and the “first sale” doctrine, which “exhausts” an owner’s right of distribution by permitting the sale of used books or the rental of DVDs after the initial lawful purchase.¹³⁰ The Supreme Court has stated that these limiting doctrines, some of which have their origins at common law, are not “unforeseen byproduct[s] of a statutory scheme,” but instead balances authors’ “right to their original expression, but encourages others to build free[ly] upon ... [their earlier] work.”¹³¹

Though the doctrine of fair use appeared in English law before our own copyright regime was in place,¹³² it was not integrated into U.S.

alter an original work “with new expression, meaning or message.” As shall be seen, it has often been viewed as dispositive in fair use cases.

127 See Forkner, supra note 6, at 720-21 and L^ESSIG, supra note 3, at 130-31.

128 Lee Ann W. Lockridge, The Myth of Copyright’s Fair Use Doctrine as a Protector of Free Speech, 24 S^ANTA C^LARA C^OMPUTER &H^IGH T^ECH L.J. 31, 36-37 (2007) (citing 17 U.S.C. § 102(b)).

129 Id. at 36 (citing Feist Publ’ns v. Rural Tel. Serv. Co., 499 U.S. 340, 344 (1991)).

130WILLIAM F.PATRY, COPYRIGHT LAW AND PRACTICE 842-43 (1994).

131 See Feist Publ’ns v. Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991) (quoted in Fair Use: Its Effects on Consumers and Industry: Hearing Before the Subcomm. on Commerce, Trade and Consumer Protection of the H. Comm. on Energy and Commerce, 109th Cong. (2005) (testimony of Peter Jaszi, Professor, American University Washington College of Law).

132 Lydia Pallas Loren, Redefining the Market Failure Approach to Fair Use in an Era of Copyright Permission Systems, 5 J.INTELL.PROP.L. 1, 15 (1997).

common law until Justice Story’s 1841 opinion in Folsom v. Marsh¹³³. In Folsom, Justice Story outlined several factors courts should weigh in deciding whether or not a use was fair: “look to the nature and objects of the selections made, the quantity and value of materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.”¹³⁴

Justice Story’s common law enunciation of fair use was followed for 135 years before the factors were finally codified in the Copyright Act of 1976:

[The] fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . ., 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 non-profit educational purposes;

(2) The nature of the copyrighted work;

(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole.

(4) The effect of the use upon the potential market or value of the copyrighted work.¹³⁵

Fair use may be seen as a “enforced consent” imposed upon the original author, who, in return for statutory protection of her exclusive rights, is deemed to assent to reasonable uses of her work. Thus, fair use and consequently “enforced consent” satisfy the Constitutional aim of promoting expansion of the public fund of knowledge; if second uses also further the promotion of the public good.¹³⁶

133 9 F. Cas. 342 (C.C.D. Mass. 1841) (No. 4,901).

134 Id. at 348.

135 Copyright Act of 1976, 17 U.S.C. § 107 (2006).

136 See generally Peter Jaszi, Copyright, Fair Use and Motion Pictures, 2007 UTAH L.REV. 715, 719 (2007) (citing ALAN LATMAN,STUDY NO.14,FAIR USE OF COPYRIGHTED WORKS (1958), reprinted in 2 STUDIES ON COPYRIGHT 781, 785

Between 1909 and 1976, legislative extensions of a copyright’s scope, subject matter, and corresponding penalties were paralleled by an increase in the number of infringement actions.¹³⁷ This was due in part, to the growth of both reproductive technology (the capacity to copy) and the power of mass media. These changes threatened to stifle new works by shrinking the public domain.¹³⁸ Courts in turn responded by embracing fair use.¹³⁹ It is possible that Congress decided to codify fair use in order to counteract the effects of its own expansion of copyright protection for the benefit of a burgeoning content industry.¹⁴⁰ The doctrine’s codification in the 1976 Copyright Act kept copyright constitutional by limiting authors’

exclusive rights. Unchecked, these exclusive rights would thwart the very progress in arts, sciences, and knowledge that copyright was created to promote.¹⁴¹

Congress acknowledged the role courts played in shaping the boundaries of copyright by incorporating the four factors originally outlined in Folsom, while allowing for continued refinement of the doctrine on a case-by-case basis.¹⁴² The House Report stated that the purpose of section 107 was to “restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way¹⁴³. . . [S]ince the doctrine is an (Arthur Fisher Memorial ed. 1963)).

137 See generally Loren, supra note 132, at 18-21.

138 Id. at 718.

139 Pat Aufderheide, How Documentary Filmmakers Overcame Their Fear of Quoting and Learned to Employ Fair Use: A Tale of Scholarship in Action, 1 INT’L J. OF COMM. 26, 27 (2007); Paul Goldstein, Fair Use in a Changing World, 50 J.COPYRIGHT SOC’Y U.S.A133, 136 (2003).

140 See generally Loren, supra note 132, at 19.

141 Id. at 21.

142 Liu, supra note 15, at 99-100.

143 While Congress stated that it intended no alteration in the common-law doctrine, the language dictating consideration of whether a use was for a commercial or non-profit educational purpose appeared very late in the drafting as a result of lobbying by educators, and did in fact constitute a contraction of the fair use doctrine which has since proven vexatious for documentary film-makers,

equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts.”¹⁴⁴

As a practical matter, fair use is an affirmative defense to infringement, and not a right, “a shield and not a sword.”¹⁴⁵ From a documentary film-makers standpoint, this poses a problem; the doctrine may only be utilized after one is sued for infringement.¹⁴⁶ Therefore, a film-maker has to endure the risk, having appropriated elements of a copyrighted work, either because the licensing fee was beyond her means, or else because the owner denied the license outright for brand-control or ideological reasons, of being subsequently sued rather than receiving a preemptive determination.¹⁴⁷ Even assuming the cost of litigation presents no obstacle to a film-maker (a considerable leap of faith, since the cost of defending an infringement action can range from $290,000 to $1 million, a cost far in excess of the unaffordable license¹⁴⁸), applying the mandatory four factors as an ex ante predictive exercise does not provide much guidance in determining whether the defense will be successful.¹⁴⁹

Most documentaries qualify as “criticism, comment, news reporting, teaching . . ., scholarship, or research.” ¹⁵⁰ While, by this among other potential users. See Lockridge, supra note 128, at 72-75; see also JESSICA LITMAN, DIGITAL COPYRIGHT 68-69 (2001).

144 Maxton-Graham v. Burtchaell, 803 F.2d 1253,1260 (2d Cir. 1986).

145 MICHAEL C. DONALDSON, supra note 118, at 280. “‘Fair use’ is not infringement of a copyright.” Michael J. Madison, A Pattern-Oriented Approach to Fair Use, 45 W^M. &M^ARY L. R^EV. 1525, 1552 (2003). The most plausible reading of 17 U.S.C. § 107 would place the burden of proof on the plaintiff, but courts have put the burden on the defendant. Id. There is debate as well as to whether fair use constitutes a right or merely a privilege. Id.

146 DONALDSON, supra note 118, at 280.

147 See generally Madison, supra note 145, at 1569.

148 Jennifer E. Rothman, The Questionable Use of Custom in Intellectual Property, 93 VA. L.REV. 1899, 1909 n.23 (2007) (citing American Intellectual Property Law Association, Report of the Economic Survey 2007, at 25 (2007)).

149 Id. at 1910-11.

150 Id. at 1910 n.27.

definition, fair use should be applicable to documentary films, they may also be considered commercial.¹⁵¹ Under the ____, whether the documentary is of a “commercial nature” impacts fair use analysis and may result in the first factor being found in favor of the owner. Many, documentaries have distribution deals with Hollywood studios, cable networks, and DVD producers. These deals create an aura of commercial exploitation that hovers over even the most high-minded nonfiction film.¹⁵² Also, the amount of material utilized from the copyrighted work impacts analysis under the third factor of the fair use test. Factor three asks “how much is too much,” and raises dual questions of “how much and how crucial was what was taken relative to the original work,” and “how much of the second work did it comprise.”¹⁵³ Even if the first three factors of the test can be satsfied, the fourth factor pre-supposes a licensing market for the copyrighted work which may render any abrogation of permission harmful, and thus not a fair use.

Since the four factor test offers little in the way of a determinative outcome one may want to consider fair use case-law. The case-law, however, also is indeterminative. Fair use is an equitable doctrine and as such cases were decided on a fact-intensive inquiry. Courts, following the express dictate of the Supreme Court, have refused to offer bright-line rules when interpreting Section 107. This has resulted not in doctrinal coherence but fragmentation.¹⁵⁴ This patchwork judicial application of the fair use test has led one of the foremost copyright scholars to label fair use “a fairy tale,” and to conclude, after surveying nearly a decades worth of fair use decisions, that “had Congress legislated a dartboard rather than [the factors in Section 107] . . . the upshot would be the same.”¹⁵⁵

151 This reflects an opinion by the author.

152 Id.

153 Id.

154 Madison, supra note 145, at 1570.

155 David Nimmer, “Fairest of Them All” and Other Fairy Tales of Fair Use, 66 LAW &CONTEMP.PROBS. 263, 263, 280 (2003).

B. THE FOUR FAIR USE FACTORS IN THE SUPREME COURT

The Supreme Court, echoing the legislative history of Section 107, has stated that courts, faced with weighing the four fair use factors, are to avoid bright-line rule-making and tailor their analysis to each specific fact-pattern. In addition, no one factor of the four is determinative, and all are to be explored individually and weighed together.¹⁵⁶ As a consequence of this avowedly ad hoc nature of fair use decision-making, the doctrinal jurisprudence has been entirely judge-made, and is thus unpredictable.¹⁵⁷ As an example, two of the three Supreme Court fair use rulings were closely decided, and all three involved reversals first in the federal appellate courts and then again at the Supreme Court.¹⁵⁸

These three Supreme Court fair use decisions staked out certain doctrinal refinements subsequently employed by lower courts. These refinements, however, are not firm guidelines for documentary film-makers. Rather, they are more like variables in an ex ante calculus regarding whether to gamble on incurring an infringement suit resulting from a fair use.¹⁵⁹

Universal City Studios v. Sony was a challenge by the motion picture industry’s to the video cassette recorder, then in its infancy. The studios claimed private home-taping of copyrighted television programming for later viewing constituted infringement.¹⁶⁰ The court found that such private non-commercial use was fair, but noted that under the statutory fair use factor, “purpose and character of the use,” a commercial or profit-making private use would be presumptively unfair.¹⁶¹ Consideration of the commercial purpose of the use does comport with the language of the statute, but risks tilting every decision towards the copyright holder and away from fair use, especially when weighed in light

156 Campbell v. Acuff-Rose Music, Inc.,510 U.S. 569, 578 (1994).

157 Madison, supra note 145, at 1666.

158 Id. at 1666.

159 See Madison, supra note 145, at 1666.

160 464 U.S. 417 (1984).

161 Id. at 451.

of the fourth factor, the effect of the use on the marketplace for the copyrighted work.¹⁶²

In Harper & Row Publishers, Inc. v. Nation Enterprises, a progressive news magazine “scooped” the forthcoming publication of Gerald Ford’s memoirs and an authorized excerpt due to run in Time magazine, when it received a pilfered manuscript and published the most sensational portion, Ford’s account of his pardon of President Nixon.¹⁶³

The Court reaffirmed that commercial use is presumptively unfair, stating that the user’s profit motive alone was not at issue, but whether “the user stands to profit from exploitation of the copyrighted material without paying the customary price.”¹⁶⁴ In addressing the third factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” where The Nation had only copied a very small part of Ford’s book and had surrounded it with a substantial amount of original reportage, the Court applied a qualitative, rather than quantitative analysis, and found the use unfair because “the heart of the work” had been copied.¹⁶⁵

Most significantly, the Court termed the fourth factor “undoubtedly the single most important element of fair use.”¹⁶⁶ Due to the fact that Time cancelled serialization subsequent to The Nation’s scoop, and the book publisher’s consequent monetary loss was found to be conclusive proof of actual market harm, the Court shifted the burden of proof to the defendant for rebuttal. The Nation failed to do so, and the Court found no fair use.¹⁶⁷

The most recent case in the Supreme Court’s fair use trilogy, Campbell v. Acuff-Rose Music, Inc,. has proven to be the most significant in terms of providing a fair use guideline to the lower courts.¹⁶⁸ Here, rap group 2 Live Crew, had copied Roy Orbison’s wholesome early ‘60's

162 Id. at 450-51.

163 471 U.S. 539, 542 (1985).

164 Id. at 562.

165 Id. at 564-66.

166 Id. at 566.

167 Id. at 567.

168 510 U.S. 569 (1994).

country-rock classic “Oh, Pretty Woman” for their gamier parody song

“Pretty Woman.”¹⁶⁹

In contrast to Sony Pictures and Harper and Row, the Court held that the commercial nature of the use was not dispositive, but merely one factor to be weighed among the four.¹⁷⁰ The Court recognized that the enumerated fair uses in the statute – news reporting, criticism, commentary, etc. – are invariably paid for by someone, quoting Dr. Johnson’s “No man but a blockhead ever wrote, except for money.”¹⁷¹ In shifting its attention away from whether the use was a commercial exploitation of a copyrighted work, the Court introduced a new criteria for the first factor’s “purpose and character of the use” which seemed to take fair use back to its origins in the social bargain of the Copyright Clause: was the secondary work

“transformative?”¹⁷² That is, did the new work, in copying an older work, supersede or supplant the older work in the marketplace, or did it :

add something new, with a further purpose or different character, altering the first with new expression, meaning, or message . . . .such works . . . lie at the heart of the fair use doctrine’s breathing space within the confines of copyright, and the more transformative the new work, the less will be the significance of the other factors, like commercialism, that may weigh against finding fair use.¹⁷³

169 Id. at 572. In addition, the Court carved out a parody exception to an author’s exclusive rights, holding that since a parody is by nature a derivative work, remand was necessary for further inquiry under the fourth fair use factor as to whether the rap song had incurred any harm to the owner’s potential market for its own derivative rap-parody work. Id. at 592-93.

170 Id. at 584-85.

171 Id. at 584.

172 Id. at 578-79.

173 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). The Court found that the raunchy rap version of “Oh, Pretty Woman” was a parody, and hence transformative. The Court reasoned that for a parody to succeed, it must, by definition, take enough from the original to elicit the minimum degree of recognition for the joke to properly effect the audience. Moreover, the Court found that the subjects of parody will often be unlikely to want to see themselves

Since Campbell, the transformative inquiry has been central to fair use decision-making, despite the fact that the phrase appears nowhere in the statute.¹⁷⁴ In every case in the appellate courts since then, if the court found the use to be transformative, it was fair use; if the use was found not to be transformative, it was infringing.¹⁷⁵ The relevance of the inquiry to the documentary context is self-evident, in that a court could arguably find that with any given use, a documentarian, by arranging the copyrighted materials used within a novel context, had transformed it. However, a finding of transformativeness is necessarily going to be a result-oriented inquiry; just about any use that is not mere plagiaristic replication transforms the original in some way, and defining the point where copying as pure commercial exploitation ends and transformation begins is so dependent upon judicial discretion that a potential defendant is in no position to guess before she copies.¹⁷⁶

Copyright scholar David Nimmer views the malleability of the four fair use factors as enabling results-oriented, and hence subjective and imprecise, fair-use decision-making: “At best the four factors fail to drive the analysis, but rather serve as convenient pegs on which to hang antecedent conclusions.”¹⁷⁷

The tension between two of the factors, which can subsume the others, is the reason. On the one hand, the purpose and character of the use leads the court to examine whether the use of an older work has transformed that material into a novel one. The fourth factor, inquiring as to how the use has affected a potential market for the original work leads courts to examine whether even the very existence of an actual or potential licensing market has been harmed by the use. But by using harm to a potential market as a bar to fair use, courts invite circular reasoning; in this

The tension between two of the factors, which can subsume the others, is the reason. On the one hand, the purpose and character of the use leads the court to examine whether the use of an older work has transformed that material into a novel one. The fourth factor, inquiring as to how the use has affected a potential market for the original work leads courts to examine whether even the very existence of an actual or potential licensing market has been harmed by the use. But by using harm to a potential market as a bar to fair use, courts invite circular reasoning; in this