As loyal readers know, I had a nasty brush with copyright law and the
ALM Media inhouse law department this past Monday.
In a nutshell,
after spending part of the weekend generating four pieces on the 2006
AmLaw 100 (released last Friday)—here, here, here,
and here—first
thing Monday I returned a phone call from an assistant general counsel
at ALM Media who proceeded to tell me that everything I’d written violated
their copyright in the AmLaw 100 and that I must take it all down forthwith.
I did not, and I did what any lawyer with himself for a client would
advise: Call in the experts.
The good news is I learned a
lot about
copyright and fair use thanks to the superb counsel and advice I
was able to draw upon, ranging from nearly a dozen readers, many
of whom I’d never heard from, who offered their thoughts in personal
emails (which were without exception generous and supportive) to
a few friends who happen to be IP lawyers, to another friend who’s
the heaviest hitter of all in this area, as General Counsel of a
major publicly-traded media organization. (You know who you
are.)
Consider what follows, then, a small effort to repay the collective
efforts of the blogosphere, and an attempt to memorialize what I learned
in hopes it might be useful in future to someone finding themselves in
a similar situation.
One motivation for doing this is the remark of an IP practitioner and friend who, unsolicited, volunteered the opinion that "There are entire in-house law departments devoted to sending out legally unjustified cease and desist letters." And the truly bad news is not that dismaying commentary on the paucity of ethics, but his additional observation that far more than half the time, threats work.
For starters, my law school alma mater has a much-more-than-decent
guide to fair use online.
But to get to "primary sources," the leading cases hereabouts are Feist
Publications, Inc. v. Rural Telephone Service Co., 499 U.S.
340 (1991) and Harper
& Row v. Nation Enterprises, 471
U.S. 539 (1985).
Feist was a dispute over whether Feist, a directory publishing
service, could copy telephone-book white page listings from Rural Telephone’s
directories and reproduce them in its own directories. As Justice
O’Connor felicitously put it:
"This case concerns the interaction of two well-established
propositions. The first is that facts are not copyrightable; the other,
that compilations of facts generally are. Each of these propositions
possesses an impeccable pedigree."
After observing that "the key to resolving the tension lies in understanding
why facts are not copyrightable,"
she discussed the constitutional
requirement of "originality" as a predicate to copyrightability. "Originality"
means that an act of independent creation took place. By contrast:
"facts
do not owe their origin to an act of authorship. The distinction is one
between creation and discovery: the first person to find and report a
particular fact has not created the fact; he or she has merely discovered
its existence. […] Census-takers, for example, do not “create” the
population figures that emerge from their efforts; in a sense, they copy
these figures from the world around them."
Compilations of facts, on the other hand, may possess originality,
but since facts themselves do not become original through association
together, "This inevitably means that the copyright in a factual
compilation is thin."
The heart of the distinction is explained thus:
“No matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking . . . . The very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even if the author was the first to discover the facts or to propose the ideas.
"It may seem unfair that much of the fruit of the compiler’s labor may
be used by others without compensation. As Justice Brennan has correctly
observed, however, this is not “some unforeseen byproduct of a statutory
scheme.” Harper & Row, 471 U.S., at 589 (dissenting opinion).
It is, rather, “the essence of copyright,” ibid., and a constitutional
requirement. The primary objective of copyright is not to reward the
labor of authors, but “to promote the Progress of Science and useful
Arts.” Art. I, § 8, cl. 8. Accord Twentieth Century Music Corp. v. Aiken,
422 U.S. 151, 156 (1975). To this end, copyright assures authors the
right to their original expression, but encourages others to
build freely upon the ideas and information conveyed by a work. Harper & Row, supra,
at 556-557. This principle, known as the idea-expression or fact-expression
dichotomy, applies to all works of authorship. As applied to a factual
compilation, assuming the absence of original written expression, only
the compiler’s selection and arrangement may be protected; the raw facts
may be copied at will. This result is neither unfair nor unfortunate.
It is the means by which copyright advances the progress of science and
art. “
Finally, the Feist court takes pains to dispose of the "sweat
of the brow" doctrine, whereby lower courts had (consistently, the High
Court implies) granted unjustified protection to factual compilations merely
because they were laborious to assemble:
"Making matters worse,
these courts developed a new theory to justify the protection of
factual compilations. Known alternatively as “sweat of the brow†or “industrious
collection,†the underlying notion was that copyright was a reward
for the hard work that went into compiling facts. The classic formulation
of the doctrine appeared in Jeweler’s Circular
Publishing Co., 281
F., at 88:“The right to copyright a book upon which one has expended labor
in its preparation does not depend upon whether the materials which
he has collected consist or not of matters which are publici juris,
or whether such materials show literary skill or
originality, either
in thought or in language, or anything more than industrious
collection. The man who goes through the streets of a town
and puts down the names of each of the inhabitants, with their
occupations and their street number, acquires material of which
he is the author†(emphasis
added).""The “sweat of the brow†doctrine had numerous flaws, the most
glaring being that it extended copyright protection in a compilation
beyond selection and arrangement — the compiler’s original contributions
— to the facts themselves. Under the doctrine, the only defense to
infringement was independent creation. A subsequent compiler was “not
entitled to take one word of information previously published,†but
rather had to “independently work out the matter
for himself, so as to arrive at the same result from the same common
sources of information.†Id., at 88-89 (internal quotations omitted). “Sweat
of the brow†courts thereby eschewed the most fundamental axiom of
copyright law — that no one may copyright facts or ideas. See Miller
v. Universal City Studios, Inc., 650 F. 2d, at 1372 (criticizing “sweat
of the brow†courts
because “ensuring that later writers obtain the facts independently
. . . is precisely the scope of protection given . . . copyrighted
matter, and the law is clear that facts are not entitled to such protectionâ€)."
Getting then to the heart of the dispute, the Court restates the question
presented as follows:
"[D]id Feist, by taking 1,309 names, towns,
and telephone numbers from Rural’s white pages, copy anything that was “original†to
Rural? Certainly, the raw data does not satisfy the originality requirement.
Rural may have been the first to discover and report the names, towns,
and telephone numbers of its subscribers, but this data does not “’owe
its origin’†to Rural. Burrow-Giles, 111 U.S., at 58. Rather, these bits
of information are uncopyrightable facts; they existed before Rural reported
them and would have continued to exist if Rural had never published a
telephone directory."
So the handwriting of the holding is on the wall, as it were: Feist
did not infringe Rural’s copyright: "copyright rewards originality,
not effort."
The other case, Harper & Row v. Nation, has a much
sexier set of facts. But the real reason we’re interested in it
is that it’s the primary authority on the parameters of "fair
use."
Shortly after President Gerald Ford left office, he negotiated a book
deal for his memoirs with Harper & Row, which subsequently
sold pre-publication rights of an excerpt dealing with Ford’s pardon
of Pres. Nixon to Time magazine for $25,000. About ten days
before the Time excerpt was to run, The Nation magazine (under the famous
Victor Navasky) obtained a purloined draft of the Ford memoir and published
a 2,500-word story on it, deliberately scooping Time and lifting 300-400
words verbatim, albeit of course with attribution, from the Ford memoir. Time
magazine promptly cancelled the story and refused to pay the second half
of the $25,000, which was still owing. Harper & Row then sued The
Nation for copyright infringement.
The Southern District of New York (557 F. Supp. 1067 (SDNY 1983)) found
for Harper & Row and rejected The Nation’s defense of "fair use."
The Second Circuit reversed (723 F.2d 195 (2d Cir. 1983)), endorsing
the defense of "fair use" and finding under the four tests enumerated
in the Copyright Act (17 U.S.C. § 107),
as follows:
- the purpose of the article was “news reporting,”
- the original work
was essentially factual in nature, - the 300 words appropriated were
insubstantial in relation to the 2,250-word piece, and - the impact on
the market for the original was minimal.
The Supreme Court, in turn, reversed again, rejecting The Nation’s "fair
use" defense. Its discussion of the four factors is the heart
of the opinion.
- Purpose of the Use: In general (there are no bright
lines here—this is an "all the facts and circumstances" inquiry),
nonprofit uses are favored over for-profit ones, news reporting and
other "productive" uses are favored, and a "true scholar" is favored
over "a chiseler." - Nature of the Copyrighted Work: The law "recognizes
a greater need to disseminate factual works than works of fiction or
fantasy," presumably on the theory that facts educate regardless
of where they originated whereas fiction or fantasy is at its core the
expression of the author. Also critical in Harper & Row was
that the Ford memoirs were unpublished when The Nation purloined them:"While
even substantial quotations might qualify as fair use in a review
of a published work or a news account of a speech that had been delivered
to the public or disseminated to the press, see House Report at 65,
the author’s right to control the first public appearance of his
expression weighs against such use of the work before its release.
The right of first publication encompasses not only the choice whether
to publish at all, but also the choices of when, where, and in what
form first to publish a work." - Amount and Substantiality of the Portion Used: This
is perhaps the single one of the four "tests" that most readily comes
to mind when discussing fair use, but it needs to be stressed that
the emphasis on the qualitative "substantiality," not the
quantitative "amount:" As the Supreme Court put it,
"In absolute terms, the words actually quoted were an insubstantial
portion of “A
Time to Heal.” The
District Court, however, found that ‘[T]he Nation took what was
essentially the heart of the book.’ […] A Time editor described
the chapters on the pardon as ‘the most interesting and moving parts
of the entire manuscript.’"The fact that the purloined 300-400 words were certainly less than
1% of the memoir manuscript, in other words, cuts no ice. - Effect on the Market: Finally we get to my favorite
test, the economic impact of the alleged infringement, and the Supreme
Court evidently is of the same view: "This last factor is undoubtedly
the single most important element of fair use." Indeed,
quoting the estimable Nimmer, they say “Fair use, when properly applied,
is limited to copying by others which does not materially impair
the marketability of the work which is copied.”Since Time reneged on its agreement to pay the second installment of
royalties to Harper & Row, the economic impact here was obvious. But
the Court went further:"More important, to negate fair
use, one need only show that, if the challenged use “should become
widespread, it would adversely affect the potential market for the
copyrighted work.” Sony Corp. of America v. Universal City Studios,
Inc., 464 U.S. at 451 (emphasis added)"In other words, courts will consider not just the isolated alleged infringement,
but how the world would look if they approved a pattern of same.
Held:
"The Court of Appeals erred in concluding that The Nation’s
use of the copyrighted material was excused by the public’s interest
in the subject matter. It erred, as well, in overlooking the unpublished
nature of the work and the resulting impact on the potential market for
first serial rights of permitting unauthorized prepublication excerpts
under the rubric of fair use. Finally, in finding the taking “infinitesimal,” the
Court of Appeals accorded too little weight to the qualitative importance
of the quoted passages of original expression. In sum, the traditional
doctrine of fair use, as embodied in the Copyright Act, does not sanction
the use made by The Nation of these copyrighted materials."
Here endeth our discussion of Harper & Row v. Nation.
Applied to what I did here on "Adam Smith, Esq." last weekend with the AmLaw 100 statistics, I concluded that my use of their non-copyrightable facts advanced knowledge and was newsworthy in its own small way, that I did not deprive them of any publication rights of their own, and that my analysis of their raw data increased, if anything, the economic value of their initial listing.
Again, I would like to humbly and graciously thank all those who contributed
to my education on this topic. My devout hope is that this
piece will help, in some small way, a future target of a claim of copyright
infringement to understand the pertinent law and to govern their behavior
accordingly.
