Reading, attending meetings, and writing the past few weeks have inspired the following guideposts for my talk to STC Chicago, the Society for Technical Communication, Chicago Chapter.

• Seek out the topics in my practice areas holding greatest interest to the attendees.
• Understand whether the subject matter is better discussed as flowing from:  activities of the individuals; or rules on the playing field.
• Include examples and practical pointers of value to the audience, where folks may learn about the landscape to sense when to engage a client-lawyer relationship as situations would arise.

On the first guidepost of relevancy to attendees, I have had the pleasure of joining lunches around the Chicago Loop and getting to know some longstanding leaders as well as newer members of STC Chicago.  Also helpful is the listing of membership as including technical writers and editors, content developers, instructional designers, academics, usability professionals, web designers and developers, and translators.  Polling has zeroed in on the topic du jour as Fair Use of content within online scenarios.

The broadest description of my talk began as “Writing and Intellectual Property Rights: Respecting Others’ and Guarding Your Own” and soon moved into “intellectual property law and its impact on how we create and manage content in a digital age.”  While I plan to present details directed to selected topics in Copyright, we can also address IP more broadly, as people may wish.  In case people wish to review the traditional categories of IP, we are able to refer to my earlier talk that had introduced and compared Patents, Trademarks, Copyrights, Trade Secrets, and Licensing.

On the second guidepost of perspective for this presentation, I see activity as leading considerations in the technical communication space, rather than government offices or the courts.  Looking at circumstances enabled by digital and internet technologies, the idea is activity is the driver on the productivity platforms supported by electronics.  Our computer hardware, software, and networks create a vast field on which people act in myriad ways, with regulation often subordinated in our thoughts to varying degrees.  Zipping electrons proceed under our direction often without obvious or immediate gatekeeper barriers to the activity we execute.  The vantage point is consonant with a comment I recently shared that technology generally evolves from hardware to software to people to organizations to policy.

IP Is Real

What is intellectual property (IP) all about?  Your own trademarks will identify you as the source of your goods and services.  Innovative designs in technology take extra care, since creating your own, or even getting your own patent, is only part of the story that can run parallel to clearance to practice your invention, also known as freedom to operate.  Trade secrets need to remain secret under watch, or else be lost.  Copyright topics are common with writing.

Point of Reference

You generally can use other people’s patent numbers, trademarks, and copyrighted snippets to make the connection in the observer’s mind of your intended identification of others’ materials as a point of reference or comparison you are trying to make.

Marketplace

When I say “you” I am talking from your individual/personal perspective, as well as your agent/professional perspective on behalf of your client.  So, you can adopt your client’s viewpoint and likewise consider how competitors of your client would view activities of the client that result from your services.  To go further with use of the IP belonging to others, consider that you may need to get permission from the IP owners.  Moving onward in the work on your project, a productive approach is to develop and protect your own IP. The focus here is on you translating your fees into your own original expressions and avoiding taking advantage of the creativity of others’ works.

Copyright – General Pointers

• Under US law, copyrights cover original literary, dramatic, musical, artistic, software, and other intellectual works of authorship.  17 U.S.C. § 102(a).
  • The copyright owner generally has exclusive rights and abilities to authorize others to exercise the rights of reproduction, distribution, public performance, and display.  17 U.S.C. § 106.
  • The copyright owner’s rights extend to the preparation of derivative works.  17 U.S.C. § 101.
  • Copyright protects both published and unpublished works.
  • The form of expression, not the idea behind the writing, is protected.  17 U.S.C. § 102(b).
• Copyright exists at creation without any notice needed.  The first fixation of the work in a tangible medium automatically secures the copyright.
  • Though not required by the law, from a business standpoint you may want to use the symbol © or word “copyright” with the year of publication and name of the copyright owner to provide affirmative notice that you intend the work to have copyright protection.
  • 17 U.S.C. § 105 eliminates copyright protection for any work of the US Government.
    • For example, the government publishes statutes and court cases, such as the ones I discuss below.
    • The government can receive and hold copyrights transferred to it.
• You or your clients may register copyrights on your own, without lawyers, at copyright.gov.
  • The registration fees are modest, currently $35 or $45 depending on your approach.
  • Registration provides a significant benefit should you have a later copyright enforcement lawsuit.
    • Registration gives you the right to attorney fees, if your copyright was registered when infringement occurred.
    • If unregistered, then no right to attorney fees when infringement occurred.
• Under 17 U.S.C. § 302, copyright generally endures for the life of the author plus 70 years after the author’s death.  In the case of an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.
• An assignment generally is needed to give the client ownership of copyright material made by an independent contractor.
  • A work contract alone would often be insufficient to assign copyright ownership since copyrights are federally granted, regardless whether the language ”work for hire” is present in the independent contractor’s work agreement.
  • This differs from an employee, where the employer typically is considered the author for writings by the employee within the scope of employment.  17 U.S.C. §§ 101 and 201(b).
  • Assignment versus License.
    • An assignment changes the ownership.
    • A license allows the IP owner to retain ownership of the IP.  The owner grants a license to others for a selected subset of the IP rights.
• A scenario presented from our preparatory survey asked about using information said to be clean that later turns out to have been borrowed.
  • Your preference is to avoid getting ensnarled in the copyright infringement with the copyright owner.
  • Even though you could bring in other liable people, the time and money would be better saved if the situation could be avoided, atop the relationships impacted.
  • As I mentioned above and we will review further below, a productive approach is to take responsibility for your writing.
  • Another safeguard is to seek an indemnification agreement from your client, if the client is providing the material for incorporation, to release you and hold you harmless from liability against legal claims, liabilities, and lawsuits that might arise from the project.
• It may be helpful to review copyright infringement and plagiarism.
  • Plagiarism can be avoided by giving credit to the author.
  • One way to avoid copyright infringement is to obtain authorization from the owner/author.
  • Another way to avoid copyright infringement is to qualify for Fair Use, regardless whether authorization or credit has been given by or to the owner/author.
• Additional answers to polled questions are embedded in this presentation.

Fair Use

Fair Use provides an exception to copyright infringement, 17 U.S.C. § 107.  As technology evolves, Fair Use has in various ways expanded as a reflection of technology.  First, I will introduce the statute and legal context.  Second, we will talk about application of Fair Use.

The Statute – “§ 107. Limitations on exclusive rights: Fair use”

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Nonexclusivity

Additional factors may be considered beyond the four factors listed in the Fair Use Statute.

Legal Context

How does Fair Use fit in the legal landscape?  Earlier, some had argued a tension existed between:

• the Constitution’s Patent and Copyright Clause:  “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;” and
• the First Amendment:  “Congress shall make no law…abridging the freedom of speech”.

The U.S. Supreme Court in Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) laid to rest any notion of such tension:

The Copyright Clause and First Amendment were adopted close in time. This proximity indicates that, in the Framers’ view, copyright’s limited monopolies are compatible with free speech principles. Indeed, copyright’s purpose is to promote the creation and publication of free expression. As Harper & Row observed: “[T]he Framers intended copyright itself to be the engine of free expression. By establishing a marketable right to the use of one’s expression, copyright supplies the economic incentive to create and disseminate ideas.” 471 U.S., at 558.

In addition to spurring the creation and publication of new expression, copyright law contains built-in First Amendment accommodations. See id., at 560. First, it distinguishes between ideas and expression and makes only the latter eligible for copyright protection. Specifically, 17 U.S.C. § 102(b) provides: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” As we said in Harper & Row, this “idea/expression dichotomy strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression.” 471 U.S., at 556 (internal quotation marks omitted). Due to this distinction, every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication. See Feist, 499 U.S., at 349—350.

Second, the “fair use” defense allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances. Codified at 17 U.S.C. § 107 the defense provides: “[T]he fair use of a copyrighted work, including such use by reproduction in copies … , for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” The fair use defense affords considerable “latitude for scholarship and comment,” Harper & Row, 471 U.S., at 560, and even for parody, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (rap group’s musical parody of Roy Orbison’s “Oh, Pretty Woman” may be fair use).

Let’s Walk Through Examples

When you are alone at work, how can you decide whether your intended use is fair?  As often happens, we need to act now, and should the courts become involved, someone looking back may or may not approve our actions.  Nevertheless, we need to act to perform our jobs.  Of course, we could seek out input from our networks and communities, even our lawyers, though each additional step comes with associated time and/or money:  many of you know the lawyer world makes a direct conversion between time and money.  At some point, we need to make a choice how to act, or even how to frame the scenario in seeking advice.  For me, seeing examples how another fact pattern plays out is helpful for gleaning insight into additional situations.  Call it extrapolation, inference, logical reasoning, or storytelling as you like.  Parties went through a lot of time, aggravation, and money to vet these examples, so we can take advantage of the effort.  I will insert quotes from the courts in our framework for the Fair Use analysis.

• Perfect 10 v. Amazon.com considers a copyright owner’s efforts to stop an Internet search engine from facilitating access to infringing images. Perfect 10, Inc. sued Google Inc., for infringing Perfect 10’s copyrighted photographs of models, among other claims.
• J.K. Rowling is the author of the Harry Potter book series.  RDR Books is a publishing company that seeks to publish a book entitled “The Lexicon.” The author of the Lexicon also operates a fan website:  “The Harry Potter Lexicon.”  The Rowling case considers copyright infringement and the defense of copyright fair use, among additional copyright issues.

Legal Context

Perfect 10 v. Amazon.com – Google

We must be flexible in applying a fair use analysis; it “is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis. . . .Nor may the four statutory factors be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright.”

Rowling – Harry Potter

The evaluation of these factors is “an open-ended and context-sensitive inquiry,” Blanch, 467 F.3d at 244; accord Campbell, 510 U.S. at 577 (stating that “the statute, like the doctrine it recognizes, calls for a case-by-case analysis”), and the examples listed in the statute (i.e., criticism, comment, news reporting, and teaching) are illustrative rather than limiting, Campbell, 510 U.S. at 577-78. The four statutory factors may not “be treated in isolation, one from another”; instead they all must “be explored, and the results weighed together, in light of the purposes of copyright.” Id. at 578. “The ultimate test of fair use, therefore, is whether the copyright law’s goal of ‘promoting the Progress of Science and useful Arts,’ U.S. Const., art. I, § 8, cl. 8, ‘would be better served by allowing the use than by preventing it.’” Castle Rock, 150 F.3d at 141 (quoting Arica Inst., 970 F.2d at 1077).

Purpose and Character of the Use

Perfect 10 v. Amazon.com – Google

The central purpose of this inquiry is to determine whether and to what extent the new work is “transformative.” Campbell, 510 U.S. at 579. A work is “transformative” when the new work does not “merely supersede the objects of the original creation” but rather “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Id. (internal quotation and alteration omitted). Conversely, if the new work “supersede[s] the use of the original,” the use is likely not a fair use. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 550-51 (1985) (internal quotation omitted) (publishing the “heart” of an unpublished work and thus supplanting the copyright holder’s first publication right was not a fair use); see also Wall Data Inc. v. L.A. County Sheriff’s Dep’t, 447 F.3d 769, 778-82 (9th Cir. 2006) (using a copy to save the cost of buying additional copies of a computer program was not a fair use).

As noted in Campbell, a “transformative work” is one that alters the original work “with new expression, meaning, or message.” Campbell, 510 U.S. at 579. “A use is considered transformative only where a defendant changes a plaintiff’s copyrighted work or uses the plaintiff’s copyrighted work in a different context such that the plaintiff’s work is transformed into a new creation.” Wall Data, 447 F.3d at 778.

Google’s use of thumbnails is highly transformative. In Kelly, we concluded that Arriba’s use of thumbnails was transformative because “Arriba’s use of the images serve[d] a different function than Kelly’s use—improving access to information on the [I]nternet versus artistic expression.” Kelly, 336 F.3d at 819. Although an image may have been created originally to serve an entertainment, aesthetic, or informative function, a search engine transforms the image into a pointer directing a user to a source of information. Just as a “parody has an obvious claim to transformative value” because “it can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one,” Campbell, 510 U.S. at 579, a search engine provides social benefit by incorporating an original work into a new work, namely, an electronic reference tool. Indeed, a search engine may be more transformative than a parody because a search engine provides an entirely new use for the original work, while a parody typically has the same entertainment purpose as the original work. See, e.g., id. at 594-96 (holding that 2 Live Crew’s parody of “Oh, Pretty Woman” using the words “hairy woman” or “bald headed woman” was a transformative work, and thus constituted a fair use); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 796-98, 800-06 (9th Cir. 2003) (concluding that photos parodying Barbie by depicting “nude Barbie dolls juxtaposed with vintage kitchen appliances” was a fair use). In other words, a search engine puts images “in a different context” so that they are “transformed into a new creation.” Wall Data, 447 F.3d at 778.

The fact that Google incorporates the entire Perfect 10 image into the search engine results does not diminish the transformative nature of Google’s use. As the district court correctly noted, Perfect 10, 416 F. Supp. 2d at 848-49, we determined in Kelly that even making an exact copy of a work may be transformative so long as the copy serves a different function than the original work, Kelly, 336 F.3d at 818-19. For example, the First Circuit has held that the republication of photos taken for a modeling portfolio in a newspaper was transformative because the photos served to inform, as well as entertain. See Nez v. Caribbean Int’l News Corp., 235 F.3d 18, 22-23 (1st Cir. 2000). In contrast, duplicating a church’s religious book for use by a different church was not transformative. See Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000). Nor was a broadcaster’s simple retransmission of a radio broadcast over telephone lines transformative, where the original radio shows were given no “new expression, meaning, or message.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998). Here, Google uses Perfect 10’s images in a new context to serve a different purpose.

…

We conclude that the significantly transformative nature of Google’s search engine, particularly in light of its public benefit, outweighs Google’s superseding and commercial uses of the thumbnails in this case. In reaching this conclusion, we note the importance of analyzing fair use flexibly in light of new circumstances. Sony, 464 U.S. at 431-32; id. at 448 n.31 (“ ‘[Section 107] endorses the purpose and general scope of the judicial doctrine of fair use, but there is no disposition to freeze the doctrine in the statute, especially during a period of rapid technological change.’ ”) (quoting H.R. Rep. No. 94-1476, p. 65-66 (1976), U.S. Code Cong. & Admin. News 1976, p. 5680)). We are also mindful of the Supreme Court’s direction that “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.” Campbell, 510 U.S. at 579.

Accordingly, we disagree with the district court’s conclusion that because Google’s use of the thumbnails could supersede Perfect 10’s cell phone download use and because the use was more commercial than Arriba’s, this fair use factor weighed “slightly” in favor of Perfect 10. Perfect 10, 416 F. Supp. 2d at 849. Instead, we conclude that the transformative nature of Google’s use is more significant than any incidental superseding use or the minor commercial aspects of Google’s search engine and website. Therefore, this factor weighs heavily in favor of Google.

Rowling – Harry Potter

Nonetheless, despite Plaintiffs’ criticisms, the Lexicon occasionally does offer “new information, new aesthetics, new insights and understandings,” Castle Rock, 150 F.3d at 141 (internal quotation marks omitted), as to the themes and characters in the Harry Potter works. The Lexicon’s discussion of certain characters, while perhaps not rigorous analysis, contain some reflections on the character, observations of his or her nature, and examples of how that nature is exhibited in the story. For example, the Lexicon observes that “Draco [Malfoy] was constantly frustrated by the attention given to Harry,” and gives anecdotal examples from the novels to support this conclusion. (See also Pl. Ex. 1, entry for “Longbottom, Neville” (containing observations about the nature of his bravery and leadership); entry for “Lovegood, Luna” (containing observations about her social awkwardness and dignity)). Moreover, in some instances, the Lexicon yields insights about an element of the Harry Potter world simply by encapsulating all the fictional facts related to that element in a single entry. When all the fictional facts related to “Hallowe’en” are collected, for example, the entry reveals that this occasion is “an eventful day in Harry’s life; on Hallowe’en 1981 his parents were killed (DH17) and his subsequent years included knocking out a troll (PS10), the opening of the Chamber of Secrets (CS8), Sirius Black’s first break-in to Hogwarts (PA8), and Harry’s name coming out of the Goblet of Fire (GF16).” Finally, the Lexicon’s etymological references, while occasionally inaccurate, offer one possible interpretation of the meaning and derivation of characters’ names, even if not the meaning intended by Rowling. Thus, while not its primary purpose, the Lexicon does add some new insight, of whatever value, as to the Harry Potter works.

The transformative character of the Lexicon is diminished, however, because the Lexicon’s use of the original Harry Potter works is not consistently transformative. The Lexicon’s use lacks transformative character where the Lexicon entries fail to “minimize[] the expressive value” of the original expression. See Bill Graham Archives, 448 F.3d at 611 (finding evidence of transformative use where the defendant “minimized the expressive value of the reproduced images by combining them with a prominent timeline, textual material, and original graphical artwork to create a collage of text and images on each page of the book”). A finding of verbatim copying in excess of what is reasonably necessary diminishes a finding of a transformative use. See Campbell, 510 U.S. at 587 (observing that “whether a substantial portion of the infringing work was copied verbatim from the copyrighted work . . . may reveal a dearth of transformative character” (internal quotation marks omitted)). As discussed more fully in analyzing the “amount and substantiality” factor, the Lexicon copies distinctive original language from the Harry Potter works in excess of its otherwise legitimate purpose of creating a reference guide. Perhaps because Vander Ark is such a Harry Potter enthusiast, the Lexicon often lacks restraint in using Rowling’s original expression for its inherent entertainment and aesthetic value. See Elvis Presley Enters., 349 F.3d at 629 (finding that where a film biography of Elvis Presley showed the plaintiffs’ copyrighted clips of Elvis’s television appearances without much interruption, “[t]he purpose of showing these clips likely goes beyond merely making a reference for a biography, but instead serves the same intrinsic entertainment value that is protected by Plaintiffs’ copyrights”).

The Lexicon also lacks transformative character where its value as a reference guide lapses. Although the Lexicon is generally useful, it cannot claim consistency in serving its purpose of pointing readers to information in the Harry Potter works. Some of the longest entries contain few or no citations to the Harry Potter works from which the material is taken. (See supra Findings of Fact; Pl. Ex. 28 (Suppl. Johnson Decl.) ¶ 16.) In these instances, the Lexicon’s reference purposes are diminished.

While the transformative character of the secondary work is a central inquiry, the commercial or nonprofit nature of the secondary work is an explicit part of the first fair-use factor. 17 U.S.C. 107(1); Blanch, 467 F.3d at 253. Given that even the statutory examples of fair use are generally conducted for profit, courts often “do not make much of this point.” Castle Rock, 150 F.3d at 141. The real concern behind the commercial nature inquiry is “the unfairness that arises when a secondary user makes unauthorized use of copyrighted material to capture significant revenues as a direct consequence of copying the original work.” Blanch, 467 F.3d at 253. Courts will not find fair use when the secondary use “can fairly be characterized as a form of commercial exploitation,” but “are more willing to find a secondary use fair when it produces a value that benefits the broader public interest.” Id. In this case, Defendant’s use of the copyrighted works is certainly for commercial gain. As the testimony of Rapoport and Vander Ark make clear, one of the Lexicon’s greatest selling points is being the first companion guide to the Harry Potter series that will cover all seven novels. Seeking to capitalize on a market niche does not necessarily make Defendant’s use non-transformative, but to the extent that Defendant seeks to “profit at least in part from the inherent entertainment value” of the original works, the commercial nature of the use weighs against a finding of fair use. Elvis Presley Enters., 349 F.3d at 628. To the extent that Defendant seeks to provide a useful reference guide to the Harry Potter novels that benefits the public, the use is fair, and its commercial nature only weighs slightly against a finding of fair use.

Nature of the Copyrighted Work

Perfect 10 v. Amazon.com – Google

Here, the district court found that Perfect 10’s images were creative but also previously published. Perfect 10, 416 F. Supp. 2d at 850. The right of first publication is “the author’s right to control the first public appearance of his expression.” Harper & Row, 471 U.S. at 564. Because this right encompasses “the choices of when, where, and in what form first to publish a work,” id., an author exercises and exhausts this one-time right by publishing the work in any medium. See, e.g., Batjac Prods. Inc. v. GoodTimes Home Video Corp., 160 F.3d 1223, 1235 (9th Cir. 1998) (noting, in the context of the common law right of first publication, that such a right “does not entail multiple first publication rights in every available medium”). Once Perfect 10 has exploited this commercially valuable right of first publication by putting its images on the Internet for paid subscribers, Perfect 10 is no longer entitled to the enhanced protection available for an unpublished work. Accordingly the district court did not err in holding that this factor weighed only slightly in favor of Perfect 10.

Rowling – Harry Potter

The second statutory fair use factor, the nature of the copyrighted work, recognizes that “some works are closer to the core of intended copyright protection than others.” Campbell, 510 U.S. at 586. It is well settled that creative and fictional works are generally more deserving of protection than factual works. Stewart v. Abend, DBA Authors Research Co., 495 U.S. 207, 237 (1990) (“In general, fair use is more likely to be found in factual works than in fictional works.”); Harper & Row, 471 U.S. at 563 (“The law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.”); Castle Rock, 150 F.3d at 143-144 (finding that the second factor favored plaintiff given the fictional nature of the copyrighted work); Twin Peaks, 996 F.2d at 1376 (stating that the second factor “must favor a creative and fictional work, no matter how successful”); Ty, Inc. v. Publ’ns Int’l, Ltd., 333 F. Supp. 2d 705, 713 (N.D. Ill. 2004) (recognizing that “creative works are deemed more deserving of protection than works that are more of diligence than of originality or inventiveness.” (internal quotation marks omitted)). In creating the Harry Potter novels and the companion books, Rowling has given life to a wholly original universe of people, creatures, places, and things. (Tr. (Sorensen) at 504:7-15). Such highly imaginative and creative fictional works are close to the core of copyright protection, particularly where the character of the secondary work is not entirely transformative. See Castle Rock, 150 F.3d at 144; Twin Peaks, 996 F.2d at 1376; Paramount, 11 F. Supp. 2d at 336. As a result, the second factor favors Plaintiffs.

Amount and Substantiality of the Portion Used

Perfect 10 v. Amazon.com – Google

“The third factor asks whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole . . . are reasonable in relation to the purpose of the copying.” Campbell, 510 U.S. at 586 (internal quotation omitted); see also 17 U.S.C. § 107(3). In Kelly, we held Arriba’s use of the entire photographic image was reasonable in light of the purpose of a search engine. Kelly, 336 F.3d at 821. Specifically, we noted, “[i]t was necessary for Arriba to copy the entire image to allow users to recognize the image and decide whether to pursue more information about the image or the originating [website]. If Arriba only copied part of the image, it would be more difficult to identify it, thereby reducing the usefulness of the visual search engine.” Id. Accordingly, we concluded that this factor did not weigh in favor of either party. Id. Because the same analysis applies to Google’s use of Perfect 10’s image, the district court did not err in finding that this factor favored neither party.

Rowling – Harry Potter

Determining how much copying of fictional facts and plot elements from the Harry Potter series is reasonably necessary to create a useful and complete reference guide presents a difficult task. As Vander Ark testified, “[a] reference work of th[is] kind has to have value based on how much information it gives, and so it is difficult sometimes to figure out the balance. And we tried to do the best we could to find a balance between” creating shorter descriptions that take less copyrighted material and creating a valuable entry that is as complete as possible. (Tr. (Vander Ark) at 281:20-23.) As to the Harry Potter series, the Lexicon often does demonstrate a significant condensation of narrated events in the novels to bare fictional facts. For example, the entry for “Boggart” encapsulates Professor Lupin’s Defense Against the Dark Arts lesson on how to use the Riddikulus spell to defeat a boggart, spanning seven pages of lively narration and dialogue (see Pl. Ex. 6 at 133-39), in one colorless phrase: “Lupin taught his third year Defence Against the Dark Arts class to fight this with the Riddikulus spell (PA7).” (Compare also Pl. Ex. 6 at 236-42, with Pl. Ex. 1, entry for “Boggart” (stating that Lupin “used a boggart as a substitute for a Dementor in tutoring Harry (PA12)”).) Other times, however, the Lexicon disturbs the balance and takes more than is reasonably necessary to create a reference guide. In these instances, the Lexicon appears to retell parts of the storyline rather than report fictional facts and where to find them. For example, the Lexicon entry for “Trelawney, Sibyll Patricia” not only copies exactly the Divination professor’s prophecies about the fates of Voldemort, Harry Potter, and Peter Pettigrew, it then tells how the prophecies are fulfilled, including events that do not involve Trelawney. (Compare also Pl. Ex. 10 at 714-720, with Pl. Ex. 1, entry for “Deathly Hallows, The,” ¶ 5 (retelling the story that Dumbledore tells Harry about his own quest for the Hallows with Grindelwald in Chapter 35 of the seventh novel).) While it is difficult to draw the line at each entry that takes more than is reasonably necessary from the Harry Potter series to serve its purposes, there are a number of places where the Lexicon engages in the same sort of extensive borrowing that might be expected of a copyright owner, not a third party author.

Effect of the Use on the Market

Perfect 10 v. Amazon.com – Google

In Kelly, we concluded that Arriba’s use of the thumbnail images did not harm the market for the photographer’s full-size images. See Kelly, 336 F.3d at 821-22. We reasoned that because thumbnails were not a substitute for the full-sized images, they did not harm the photographer’s ability to sell or license his full-sized images. Id. The district court here followed Kelly’s reasoning, holding that Google’s use of thumbnails did not hurt Perfect 10’s market for full-size images. See Perfect 10, 416 F. Supp. 2d at 850-51. We agree.

Rowling – Harry Potter

The fourth statutory factor considers “the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). Courts must consider harm to “not only the primary market for the copyrighted work, but the current and potential market for derivative works” as well. Twin Peaks, 996 F.2d at 1377 (finding that fourth factor favored plaintiff where book about television series “may interfere with the primary market for the copyrighted works and almost certainly interferes with legitimate markets for derivative works”); see also Harper & Row, 471 U.S. at 568. Potential derivative uses “include[] only those that creators of original works would in general develop or license others to develop.” Campbell, 510 U.S. at 592. The fourth factor will favor the copyright holder “if she can show a ‘traditional, reasonable, or likely to be developed’ market for licensing her work.” Ringgold, 126 F.3d at 81. In addition to evaluating the particular actions of the alleged infringer, the fourth factor examines “whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market for the original.” Campbell, 510 U.S. at 590 (omission in original) (internal quotation marks and citations omitted).

…

Plaintiffs presented expert testimony that the Lexicon would compete directly with, and impair the sales of, Rowling’s planned encyclopedia by being first to market. (Tr. (Murphy) at 413:2-416:6, 417:21-418:9.) Defendant rebutted this evidence with its own expert who testified that publication of the Lexicon is “extremely unlikely” to affect the sales of any encyclopedia that Rowling might one day publish. (Id. (Harris) at 442:9- 16.) This testimony does not bear on the determination of the fourth factor, however, because a reference guide to the Harry Potter works is not a derivative work; competing with Rowling’s planned encyclopedia is therefore permissible. Notwithstanding Rowling’s public statements of her intention to publish her own encyclopedia, the market for reference guides to the Harry Potter works is not exclusively hers to exploit or license, no matter the commercial success attributable to the popularity of the original works. See Twin Peaks, 996 F.2d at 1377 (“The author of ‘Twin Peaks’ cannot preserve for itself the entire field of publishable works that wish to cash in on the ‘Twin Peaks’ phenomenon”). The market for reference guides does not become derivative simply because the copyright holder seeks to produce or license one. Ty, Inc., 292 F.3d at 521; see also Castle Rock, 150 F.3d at 145 n.11 (“[B]y developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work, a copyrighted owner plainly cannot prevent others from entering those fair use markets”); Twin Peaks, 996 F.2d at 1377.

…

On the other hand, publication of the Lexicon could harm sales of Rowling’s two companion books. Unless they sought to enjoy the companion books for their entertainment value alone, consumers who purchased the Lexicon would have scant incentive to purchase either of Rowling’s companion books, as the information contained in these short works has been incorporated into the Lexicon almost wholesale. (Tr. (Murphy) at 419:10-19; id. (Rowling) at 104:2-11.) Because the Lexicon’s use of the companion books is only marginally transformative, the Lexicon is likely to supplant the market for the companion books. See Campbell, 510 U.S. at 591 (stating that “when a commercial use amounts to mere duplication of the entirety of an original, it clearly ‘supersede[s] the objects’ of the original and serves as a market replacement for it, making it likely that cognizable harm to the original will occur” (citation omitted)). At trial, Vander Ark himself recognized that although “[t]here’s no way that someone’s going to take an encyclopedia of [the Harry Potter novels] and think of it as a replacement” (Tr. (Vander Ark) at 287:14-16), using the companion books without “replac[ing] Ms. Rowling’s encyclopedia content” presents “quite a challenge” (id. at 287:22-25). In view of the market harm to Rowling’s companion books, the fourth factor tips in favor of Plaintiffs.

Additionally, the fourth factor favors Plaintiffs if publication of the Lexicon would impair the market for derivative works that Rowling is entitled or likely to license. Ringgold, 126 F.3d at 81. Although there is no supporting testimony, one potential derivative market that would reasonably be developed or licensed by Plaintiffs is use of the songs and poems in the Harry Potter novels. Because Plaintiffs would reasonably license the musical production or print publication of those songs and poems, Defendant unfairly harms this derivative market by reproducing verbatim the songs and poems without a license.

The Ruling:  Google’s Use Was Fair

Having undertaken a case-specific analysis of all four factors, we now weigh these factors together “in light of the purposes of copyright.” Campbell, 510 U.S. at 578; see also Kelly, 336 F.3d at 818 (“We must balance [the section 107] factors in light of the objectives of copyright law, rather than view them as definitive or determinative tests.”). In this case, Google has put Perfect 10’s thumbnail images (along with millions of other thumbnail images) to a use fundamentally different than the use intended by Perfect 10. In doing so, Google has provided a significant benefit to the public. Weighing this significant transformative use against the unproven use of Google’s thumbnails for cell phone downloads, and considering the other fair use factors, all in light of the purpose of copyright, we conclude that Google’s use of Perfect 10’s thumbnails is a fair use.

The Ruling:  the Lexicon Was an Unfair Use; Rowling Wins

The fair-use factors, weighed together in light of the purposes of copyright law, fail to support the defense of fair use in this case. The first factor does not completely weigh in favor of Defendant because although the Lexicon has a transformative purpose, its actual use of the copyrighted works is not consistently transformative. Without drawing a line at the amount of copyrighted material that is reasonably necessary to create an A-to-Z reference guide, many portions of the Lexicon take more of the copyrighted works than is reasonably necessary in relation to the Lexicon’s purpose. Thus, in balancing the first and third factors, the balance is tipped against a finding of fair use. The creative nature of the copyrighted works and the harm to the market for Rowling’s companion books weigh in favor of Plaintiffs. In striking the balance between the property rights of original authors and the freedom of expression of secondary authors, reference guides to works of literature should generally be encouraged by copyright law as they provide a benefit readers and students; but to borrow from Rowling’s overstated views, they should not be permitted to “plunder” the works of original authors (Tr. (Rowling) at 62:25-63:3), “without paying the customary price” Harper & Row, 471 U.S. at 562, lest original authors lose incentive to create new works that will also benefit the public interest (see Tr. (Rowling) at 93:20-94:13).

Lesson:  Don’t Be a Creatively-Lazy Fan

Digital Millennium Copyright Act (DMCA)

To wrap up this presentation, we can touch on the Digital Millennium Copyright Act (DMCA).  A deeper discussion of the DMCA can come on another day, having a different focus.  Briefly, the DMCA involves:

• anti-DRM (digital rights management): copy-prevention systems and technical-protection measures.
• heightened penalties for copyright infringement on the internet.
• 17 U.S.C. § 512(c)(3)(A)(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
• For exampe, you can see the Creative Commons DMCA Notice and Takedown Procedure.
• Consider the following case under the DMCA, which includes Fair Use in its analysis.

In Lenz v. Universal Music, Lenz currently has the upper hand in a lawsuit where she videotaped her young children dancing in her family’s kitchen with the song “Let’s Go Crazy” by the artist known as Prince playing in the background.  Lenz titled the video “Let’s Go Crazy #1” (twenty-nine seconds in length) and uploaded it to YouTube.com, after which it was taken down and reposted through DMCA notifications.

Text Copyright © 2008 Bob Brill

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