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Copyright Fair Use Cases of the United States Supreme Court


Written by
Gene Quinn (left)
Patent Attorney & Founder of IPWatchdog
Michael Sullivan (right)
3rd Year Law Student, John Marshall Law School
Posted: October 5, 2012 @ 7:20 am
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United States Supreme Court.

October overwhelmingly means one thing in the legal world. No, not Halloween, although to some it may seem just as scary.

Every October the United States Supreme Court breaks its hibernation and starts its new session. Every case heard and decision handed down by the Supreme Court between October 1, 2012 and the end of June 2013 will be a part of the Court’s October 2012 term.

I know I am running a little late, because the Supreme Court heard its first arguments earlier in the week, but I have been planning to make October 2012 Supreme Court month on IPWatchdog.com. This, the first of what will be a handful of SCOTUS related intellectual property articles, is a summary of the most important Supreme Court copyright fair use cases dating back Baker v. Selden in 1879.

Stay tuned for similar articles on trademarks and patents, as well as other Supreme Court related articles I’m sure you will enjoy.

Before jumping into the Supreme Court fair use cases, let’s take a moment to first generally explore fair use.  Copyright law gives copyright owners “exclusive rights” to that which is copyrighted.  It is entirely appropriate to put the term – exclusive rights – in quotes because copyrights are not exclusive in nature like patents.  There are a great many authorized uses of copyrighted works.  Indeed, sometimes authorized fair uses seem to swallow the copyright exclusivity whole.

The fact that the copyright owner enjoys “exclusive rights” should not be understood to mean that only the copyright owner may engage in the listed activities (i.e., copying, distributing, performing, etc.). The right of the copyright owner is exclusive in nature, but far from absolute. This is true primarily due to what is known as “fair use.”  The Copyright Act allows for copyright works to be used, and for such use not to be considered infringement, for purposes such as criticism, comment, news reporting, teaching, scholarship, and/or research, so long as the work is “fairly used.” In determining whether the use in any particular case is a fair use Courts must consider four factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  See 17 U.S.C. 107.  While § 107 states the generic fair use exception to copyright infringement, there are also a series of highly specific fair uses defined in the statute.  See 17 U.S.C. 108 through 122.

Now, without further ado, here is a review of Supreme Court Fair Use jurisprudence.

Baker v. Selden, 101 U.S. 99 (1879) – The book or series of books of which the complainant claims the copyright consists of an introductory essay explaining the system of book-keeping referred to, to which are annexed certain forms or banks, consisting of ruled lines, and headings, illustrating the system and showing how it is to be used and carried out in practice. This system effects the same results as book-keeping by double entry; but, by a peculiar arrangement of columns and headings, presents the entire operation, of a day, a week, or a month, on a single page, or on two pages facing each other, in an account-book. The defendant uses a similar plan so far as results are concerned; but makes a different arrangement of the columns, and uses different headings. The Supreme Court concluded that the blank account-books are not the subject of copyright; and that the mere copyright of Selden’s book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book.

International News Service v. Associated Press, 248 U.S. 215 (1918) – This was one of the first cases to address the issues raised by these technological advances, although the technology involved in the case was primitive by contemporary standards. The case involved two wire services, the Associated Press (“AP”) and International News Service (“INS”), both transmitted news stories by wire to member newspapers. INS would lift factual stories from AP bulletins and send them by wire to INS papers. INS would also take factual stories from east coast AP papers and wire them to INS papers on the west coast that had yet to publish because of time differentials. The Supreme Court held that INS’s conduct was a common-law misappropriation of AP’s property.

Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984) – Petitioner Sony Corp. manufactures home video tape recorders (VTRs), and markets them through retail establishments, some of which are also petitioners. Respondents own the copyrights on some of the television programs that are broadcast on the public airwaves. Respondents brought an action against petitioners in Federal District Court, alleging that VTR consumers had been recording some of respondents’ copy-righted works that had been exhibited on commercially sponsored television and thereby infringed respondents’ copyrights, and further that petitioners were liable for such copyright infringement because of their marketing of the VTRs. The Supreme Court explained that any individual may reproduce a copyrighted work for a “fair use”; the copyright owner does not possess the exclusive right to such a use. The Court held that the recording accomplished by VTRs was only time-shifting in nature and even though 100% of the copyrighted work was copied, the use nonetheless constituted a fair use.

Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985) – In 1977, former President Ford contracted with petitioners to publish his as yet unwritten memoirs. The agreement gave petitioners the exclusive first serial right to license prepublication excerpts. Two years later, as the memoirs were nearing completion, petitioners, as the copyright holders, negotiated a prepublication licensing agreement with Time Magazine under which Time agreed to pay $25,000 ($12,500 in advance and the balance at publication) in exchange for the right to excerpt 7,500 words from Mr. Ford’s account of his pardon of former President Nixon. Shortly before the Time article’s scheduled release, an unauthorized source provided The Nation Magazine with the unpublished Ford manuscript. Working directly from this manuscript, an editor of The Nation produced a 2,250-word article, at least 300 to 400 words of which consisted of verbatim quotes of copyrighted expression taken from the manuscript. It was timed to “scoop” the Time article. As a result of the publication of The Nation’s article, Time canceled its article and refused to pay the remaining $12,500 to petitioners. Petitioners then brought suit in Federal District Court against respondent publishers of The Nation, alleging, inter alia, violations of the Copyright Act (Act). After considering the four fair use factors listed in 17 USC § 107, the Supreme Court found the use to NOT be a fair use, in large part because The Nation copied the heart of the story.

Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340 (1991) – Respondent Rural Telephone Service Company is a certified public utility providing telephone service to several communities in Kansas. Pursuant to state regulation, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. It obtains data for the directory from subscribers, who must provide their names and addresses to obtain telephone service. Petitioner Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories covering a much larger geographic range than directories such as Rural’s. When Rural refused to license its white pages listings to Feist for a directory covering 11 different telephone service areas, Feist extracted the listings it needed from Rural’s directory without Rural’s consent. The constitutional requirement necessitates independent creation plus a modicum of creativity. Since facts do not owe their origin to an act of authorship, they are not original, and thus are not copyrightable. Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so that readers may use them effectively, copyright protection extends only to those components of the work that are original to the author, not to the facts themselves. Rural’s white pages do not meet the constitutional or statutory requirements for copyright protection. While Rural has a valid copyright in the directory as a whole because it contains some forward text and some original material in the yellow pages, there is nothing original in Rural’s white pages. The raw data are uncopyrightable facts, and the way in which Rural selected, coordinated, and arranged those facts is not original in any way. Rural’s selection of listings – subscribers’ names, towns, and telephone numbers – could not be more obvious, and lacks the modicum of creativity necessary to transform mere selection into copyrightable expression.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164 (1994) – Respondent Acuff-Rose Music, Inc., filed suit against petitioners, the members of the rap music group 2 Live Crew and their record company, claiming that 2 Live Crew’s song, “Pretty Woman,” infringed Acuff-Rose’s copyright in Roy Orbison’s rock ballad, “Oh Pretty Woman.” While this case does not necessarily have any particular importance for the topic of academic use of copyrighted material, this case does represent the last time the United States Supreme Court addressed the fair use doctrine. Additionally, the Court explains, as have other courts, that a use that is transformative in nature is particularly worthy of the mantel of fair use protection. In this respect the Court stated: “Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright, and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

Eldred v. Ashcroft, 537 U.S. 186 (2003) – Petitioners, entities benefiting from copyrighted works that entered into the public domain, sued Respondent, U.S. Attorney General John Ashcroft in regards to Congress’ enactment of the Copyright Term Extension Act (CTEA) of 1998. The CTEA extended copyright protection by 20 years for works in the public domain, works currently protected by the Copyright Act of 1976, and works seeking copyright protection. Petitioners alleged that the enactment of the CTEA was a violation of the First Amendment and failed constitutional review under the Copyright Clause’s “limited term” stipulation for copyright protection. The Supreme Court held that the Copyright Clause grants Congress the discretion to define the scope of the “limited term.” An additional 20 years to copyright protection duration does not change the contours of protection set forth since the framing of the Constitution, nor does it alter copyright protection any differently than Congress did in the 1831, 1909 and 1976 Copyright Acts. Furthermore, the CTEA does not violate the First Amendment as the Copyright Clause and the First Amendment were ratified in the Constitution at roughly the same time allowing for the both of them to work in collaboration. The Copyright Clause also contains First Amendment accommodations, including the fair use doctrine, that allows the use of facts and ideas prevalent in copyrighted works, as well as the limited use of copyrighted expression in limited circumstances. The CTEA further expands the fair use doctrine for scholarship, comment, and parody of copyrighted works as well as for use of copyrighted works by scholarly institutions.

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) – Respondents, motion picture and recording studios including Metro-Goldwyn-Mayer Studios Inc., sued petitioner, Grokster, Ltd. alleging secondary liability for facilitating software which allows and promotes the infringement of copyrighted works through online peer-to-peer file sharing. The primary issue in this case was the infringing intent of Grokster and its software. Grokster marketed its peer-to-peer software to those who were forced to abandon previously shut down peer-to-peer software applications.  Grokster made money on this activity by collecting revenue associated with advertisements, which were allowed to be posted on its software application.  Grokster also was alleged to have provided instructions on how to engage in infringing activities. Due to this evidence, the significant amount of infringing downloads facilitated by Grokster’s software, and the software’s lack of lawful uses, the Supreme Court found in favor of the Respondents and rejected Petitioner’s arguments that the use of the software was acceptable under the fair use doctrine. The fair use doctrine protects liability for a third party when the primary purpose of the technology or software is to facilitate non-infringing use. Grokster failed to put forth evidence rebutting the overwhelming evidence of its infringing purpose.

Golan v. Holder, 132 S.Ct. 873 (2012) – Petitioners, orchestra conductors, musicians, publishers and others that enjoyed the free access to preexisting foreign works in the public domain sued, Respondent, the U.S. Attorney’s Office claiming a violation of the First Amendment, as well as claiming that Congress exceeded its authority under the Copyright Clause. In 1994, Congress implemented §514 of the Uruguay Round Agreement Act (URAA) which extended copyright protection to works that were previously denied U.S. copyright protection.  Prior to this the U.S. did not protect sound recordings before 1972 or when the author had not complied with certain U.S. statutory formalities. The Supreme Court, first, held that §514 does not exceed Congress’ authority under the Copyright Clause of the U.S. Constitution because the Copyright Clause does not exclude copyright protection to works that are in or were previously in the public domain. In fact, the Supreme Court pointed out that Congress has, multiple times, adjusted copyright law to allow for the protection of new categories of works and works that were previously in the public domain. Second, §514 does not violate the First Amendment because “the idea/expression dichotomy” and the “fair use defense,” were not impeded nor limited by the statute’s implementation.  For a more detailed treatment see Supreme Court OKs Public Domain Works Being Copyrighted.

About the Authors

Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. As an electrical engineer by training his practice primarily focuses on software, computers and Internet innovations, as well as electrical and mechanical devices. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide.

Michael Sullivan is a third year law student at the John Marshall Law School. He will graduate in January 2013 with a J.D. Certificate in Intellectual Property Law Patent Track. He has a Bachelor of Science undergraduate degree in Biology from Loyola University Chicago and will pursue a career in patent prosecution and litigation. His legal experience includes clerking for various intellectual property and patent law firms in Chicago, IL and, internationally, in Beijing, China. Along with gaining practical experience working for these firms, Michael has been a research assistant for Professor Daryl Lim assisting in patent misuse research as well as contemporary patent law cases and issues. His other law school accolades include the Review of Intellectual Property at John Marshall Law School and prior work as a graduate assistant in the Office of Diversity Affairs.


5 comments
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  1. the Copyright Clause does not exclude copyright protection to works that are in or were previously in the public domain

    That the “Copyright Clause” is the same clause as the “Patent Clause” directly leads to:

    the Patent Clause does not exclude patent protection to works that are in or were previously in the public domain

    Does this overturn any (many? all?) of the Court’s decisions on a pinnacle idea behind patent law (prior art)? Can Congress write a patent law, or agree to a foreign country’s writing of a patent law via treaty, that actually disregards the public domain?

    How in the world did the Supreme Court come up with that view?

  2. “the Patent Clause does not exclude patent protection to works that are in or were previously in the public domain”

    I think this happens all the time. Suppose I file a patent application, publish my invention and then sometime later my patent issues. Once I publish my invention, it’s in the US public domain. Anyone can make, sell and use it. Once my patent issues, however, my invention is removed from the pubic domain.

    Or do I not understand “in the public domain”?

  3. Mark,

    It is the open ended nature of the quote that is troubling. Your example is clearly a special exception known as the Grace Period.

    Would you bat an eye if Congress made the Grace Period open ended?

  4. Anon,

    I’m not saying that it’s not troubling. I’m just giving an example from patent law where what was previously in the open domain was later removed. And yes, it is very troubling. See the example of Jerome Lemelson where his patents on bar code readers issued 30 years after they were filed. http://en.wikipedia.org/wiki/Jerome_Lemelson

    This just emphasizes the importance of compact prosecution. The faster it takes to get a patent allowed/abandoned, the better it is for the public.

  5. [...] TweetJustices of the United States Supreme CourtWith every October comes a new Term at the United States Supreme Court.  Arguments are underway in the October 2012 Term, which will last through the end of June 2013.  As part of our continuing look at intellectual property and the United States Supreme Court, here is a bit of a SCOTUS primer on trademark law. For our primer on SCOTUS fair use cases please see Copyright Fair Use Cases of the United States Supreme Court. [...]