Oral Argument Requested

UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
____________________
No. 94-1778

____________________

PRINCETON UNIVERSITY PRESS, MACMILLAN,
INC., and ST. MARTIN’S PRESS, INC.,

Plaintiffs-Appellees,

v.

MICHIGAN DOCUMENT SERVICES, INC.,
and JAMES M. SMITH,

Defendants-Appellants.

____________________

BRIEF OF DEFENDANTS-APPELLANTS,
MICHIGAN DOCUMENT SERVICES, INC.
AND JAMES M. SMITH

____________________

ORAL ARGUMENT REQUESTED

____________________

 

 

                              Susan M. Kornfield (P41071)
                              David G. Chardavoyne (P27034)
                              Louise-Annette Marcotty (P44657)
                              Lydia Pallas Loren (P47644)
                              Attorneys for Defendants-Appellants
                              BODMAN, LONGLEY & DAHLING
                              110 Miller, Suite 300
                              Ann Arbor, Michigan  48104
                              (313) 761-3780

October 13, 1994


TABLE OF CONTENTS

TABLE OF AUTHORITIES iii

STATEMENT OF SUBJECT MATTER AND APPELLATE JURISDICTION vii

STATEMENT IN SUPPORT OF ORAL ARGUMENT viii

DISCLOSURE OF CORPORATE AFFILIATIONS AND FINANCIAL INTEREST ix

STATEMENT OF ISSUES 1

STATEMENT OF THE CASE 2

COURSE OF PROCEEDINGS AND DISPOSITION IN DISTRICT COURT 3

STATEMENT OF THE FACTS 5

STANDARD OF REVIEW 10

ARGUMENT 11

I.THE BASIS FOR UNDERSTANDING AND DETERMINING FAIR USE IS THE CONSTITUTION, THE COPYRIGHT ACT, AND SUPREME COURT DECISIONS. 11

A.There is no basis for the publishers’ “copyright-as-property” argument. 11

B.The Copyright Act states that the reproduction of copyrighted works for classroom use is a fair use. There is no prohibition against using third-party services to obtain those copies. 13

C.The Supreme Court has held that a fair use adjudication rejects strict views of copyright ownership, and requires a case-by-case analysis. 19

II.APPLICATION OF THE FAIR USE FACTORS CLEARLY SHOWS THAT DEFENDANTS’ ACTIONS ARE NOT AN INFRINGEMENT. 20

A.First factor: the purpose and character of the use. 21

B.Second factor, the nature of the work: the works excerpted were historical and factual and not fantasy or fiction. 26

C.Third factor: the amount and substantiality of the portion used in relation to the copyrighted work as a whole. 28

D.Fourth factor: the effect of the use upon the potential market for or the value of the copyrighted work. 30

E.Unenumerated fair use factors favor defendants. 33

III.THE COURT MUST REVERSE THE AWARD OF SUMMARY JUDGMENT IN FAVOR OF PLAINTIFFS AND SHOULD GRANT SUMMARY JUDGMENT FOR DEFENDANTS. 39

A.The Court of Appeals must reverse the award of summary judgment in favor of plaintiffs. 39

B.The Court of Appeals should grant summary judgment for defendants. 40

IV.DEFENDANTS ARE ENTITLED TO A JURY TRIAL ON THEIR DEFENSES. 43

V.AS A MATTER OF LAW, DEFENDANTS CANNOT BE WILLFUL EVEN IF THEY ARE FOUND TO BE INFRINGERS. 46

VI.THE DISTRICT COURT’S INJUNCTION IS UNCONSTITUTIONAL. 48

CONCLUSION 49


TABLE OF AUTHORITIES

CasesPages

A.B. Small Co. v. American Sugar Refining Co.,
267 U.S. 233, 45 S.Ct. 295 (1925)41

Anderson v. Liberty Lobby Inc., 477 U.S. 242,
106 S.Ct. 2505 (1986)10

Ardestani v. I.N.S., ___ U.S. ___, 112 S.Ct. 515
(1991)16

Basic Books, Inc. v Kinko’s Graphics Corp.,
758 F.Supp. 1522 (S.D.N.Y. 1991)8

Boddie v. American Broadcasting Co., 881 F.2d 267
(6th Cir. 1989), cert. denied, 493 U.S. 1028,
110 S.Ct. 737 (1990)41

Boothroyd Dewhurst, Inc. v. Poli, 783 F.Supp. 670
(D. Mass 1991)44

Boretti v. Wiscomb, 930 F.2d 1150 (6th Cir. 1991)10

Broadcast Music, Inc. v. Hearst/ABC Viacom Ent.
Services, 746 F.Supp. 320 (S.D.N.Y. 1990)44

Campbell v. Acuff Rose Music, Inc., ___ U.S. ___,
114 S.Ct. 1164 (1994)passim

Celotex Corp. v. Catrett, 477 U.S. 329,
106 S.Ct. 2548 (1985)44

Colautti v. Franklin, 439 U.S. 379,
99 S.Ct. 675 (1979)42

Commissioner v. Asphalt Prod. Co., 482 U.S. 117,
107 S.Ct. 2275 (1987)16

Community for Creative Non-Violence v. Reid,
490 U.S. 730, 109 S.Ct. 2166 (1989)13, 17

Connecticut Nat’l Bank v. Germain, ___ U.S. ___,
112 S.Ct. 1146 (1992)16

Crandon v. United States, 494 U.S. 152,
110 S.Ct. 997 (1990)15

Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661
(2d Cir. 1939)42
Eltra Corp. v. Basic, Inc., 599 F.2d 745
(6th Cir.), cert. denied, 444 U.S. 942,
100 S.Ct. 297 (1979)46

Feist Publications, Inc. v. Rural Telephone Service Co.,
499 U.S. 340, 111 S.Ct. 1282 (1991)passim

First Comics, Inc. v. World Color Press, Inc.,
884 F.2d 1033 (7th Cir. 1989), cert. denied,
493 U.S. 1075, 110 S.Ct. 1123 (1990)25

Fogerty v. Fantasy, Inc. __ U.S. __,
114 S.Ct. 1023 (1994)4, 11, 12

Folsom v. Marsh, 9 F.Cas. 342 (C.C.D. Mass. 1841)22, 28, 30

Grayned v. City of Rockford, 408 U.S. 104,
92 S.Ct. 2294 (1972)41

Harper & Row v. Nation Enterprises, 471 U.S. 539,
105 S.Ct. 2218 (1985)passim

Hickory Grove Music v. Andrews, 749 F.Supp. 1031,
amended, 1990 U.S. Dist. LEXIS 19389
(D.Mont. Sept. 13, 1990)48

Lasercomb America, Inc. v. Reynolds, 911 F.2d 970
(4th Cir. 1990) 45

M. Witmark & Sons v. Jensen, 80 F.Supp 843
(D.Minn. 1948), app. dismissed,
177 F.2d 515 (8th Cir. 1949)45

Maxtone-Graham v. Burtchaell, 803 F.2d 1253
(2d Cir.), cert. denied, 481 U.S. 1059,
107 S.Ct. 2201 (1986)42

MCA, Inc. v. Wilson, 677 F.2d 180 (2d Cir. 1981)42

Metromedia, Inc. v. City of San Diego,
453 U.S. 490, 101 S.Ct. 2882 (1981)18, 46

Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989)31

National Rifle Ass’n of America v. Handgun
Control Fed’n
, 15 F.3d 559 (6th Cir. 1994),
cert. denied, 1994 U.S. LEXIS 5520
(Oct. 3, 1994)10, 21, 26, 30, 31, 38

New Era Publications Int’l v. Carol Publishing
Group, 904 F.2d 152 (2d Cir.), cert. denied,
498 U.S. 921, 111 S.Ct. 297 (1990)21
RCA/Ariola Int’l, Inc. v. Thomas & Grayston Co.,
845 F.2d 773 (8th Cir. 1988)46, 48

Rosemont Enter., Inc. v. Random House, Inc.,
366 F.2d 303 (2d Cir. 1966), cert. denied,
385 U.S. 10009, 87 S.Ct 714 (1967)45

Rust v. Sullivan, 500 U.S. 173,
111 S.Ct. 1759 (1991)42

Sony Corp. of America v. Universal Studios, Inc.,
464 U.S. 417, 104 S.Ct 774 (1984)passim

Sprinklets Water Center, Inc. v. McKesson
Corporation, 806 F.Supp. 656
(E.D. Mich. 1992)40

Taft Broadcasting Co. v. United States,
929 F.2d 240 (6th Cir. 1991)10

Triangle Publications, Inc. v. Knight-Ridder
Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980)42, 46

United States v. Loew’s Inc., 371 U.S. 38,
83 S.Ct. 97 (1962)45

United States v. Nordic Village, Inc.,
___ U.S. ___, 112 S.Ct. 1011 (1992)15

United States v. Ron Pair Enterprises, Inc.,
489 U.S. 235, 109 S.Ct. 1026 (1989)16

Vogue Ring Creations, Inc. v. Hardman,
410 F.Supp 609 (D.R.I. 1976)44

West Virginia Univ. Hosps. v. Casey,
499 U.S. 83, 111 S.Ct. 1138 (1991)17

Williams & Wilkins Co. v. United States,
487 F.2d 1345 (Ct. Cl. 1973),
aff’d by an equally divided court,
420 U.S. 376, 95 S.Ct. 1344 (1975)20, 31, 34
U.S. Constitution

U.S. Const. art. I, §§, cl. 811
Statutes and Rules

U.S. Copyright Act of 1976, 17 U.S.C. §§ 101 et. seq.passim

28 U.S.C. § 1291vii

28 U.S.C. § 1338vii

Fed. R. Civ. P. 563, 39
Other

Wright & Miller, 10A Federal Practice and Procedure
§ 2720 (1983)40

Leval, Pierre N., “Toward a Fair Use Standard,”
103 Harv. L. Rev. 1105 (1990)42

Nimmer, 3 Nimmer on Copyrights, § 14.04[B][3] (1992)46



STATEMENT OF SUBJECT MATTER AND APPELLATE JURISDICTION

This case arises under the United States Copyright Act, 17 U.S.C. §101 et seq. (the “Copyright Act”). Defendants appeal from a final judgment of the United States District Court in a matter in which the District Court had subject matter jurisdiction under 28 U.S.C. §1338. This Court has jurisdiction under 28 U.S.C. §1291.

STATEMENT IN SUPPORT OF ORAL ARGUMENT
This is a case of first impression in this Circuit. It is the first time any Court of Appeals has heard a case involving the rights of professors and students to make a fair use of excerpts of educational materials in connection with teaching and classroom studies and to have copies of those materials reproduced for them by a third party. This case involves a complex factual record and presents legal issues that are intricate and novel. The decision by this Court of Appeals will affect not only the parties to this litigation, but will have a direct effect upon higher education throughout this country. The Court’s decision will have a significant impact upon the right of educators and students to use excerpts of copyrightable works in connection with teaching, and will determine the extent of the right of fair use in educational environments.

This case raises issues of copyright that have a history of being reversed on appeal. The opportunity to address these issues in greater detail to this Court, and to respond to inquiries from this Court, will aid the Court in its decision-making process.

DISCLOSURE OF CORPORATE AFFILIATIONS AND FINANCIAL INTEREST

PRINCETON UNIVERSITY PRESS, MACMILLAN,
INC., and ST. MARTIN’S PRESS, INC.,

Plaintiffs-Appellees,

v.

MICHIGAN DOCUMENT SERVICES, INC.,
and JAMES M. SMITH,

Defendants-Appellants.

DISCLOSURE OF CORPORATE AFFILIATIONS
AND FINANCIAL INTEREST
Pursuant to 6th Cir. R. 25, MICHIGAN DOCUMENT SERVICES, INC., and JAMES M. SMITH make the following disclosure:

1.Is said party a subsidiary or affiliate of a publicly-owned corporation? NO

2.Is there a publicly-owned corporation, not a party to the appeal, that has a financial interest in the outcome? NO

October 13, 1994

___________________________________
David G. Chardavoyne (P27034)
Bodman, Longley & Dahling
110 Miller, Ste. 300
Ann Arbor, Michigan 48104
(313) 761-3780


STATEMENT OF ISSUES

1. Whether students and professors may exercise their right of fair use under the U.S. Copyright Act, 17 U.S.C. §§101, 107 (the right to reproduce excerpts of copyrighted works for purposes such as teaching, including multiple copies for classroom use) by having a third party provide the photocopy service at their request and on their behalf.

2. Whether publishers may reserve for themselves an exclusive market for the use of excerpts of copyrighted works, and may control access to and all use of such excerpts, even for uses specifically enumerated in 17 U.S.C. §107.

3. Whether a District Court can grant summary judgment even though the moving party has failed to meet its burden of demonstrating “the absence of a genuine issue of material fact.”

4. Whether a statute can, consistent with due process, be interpreted in a manner inconsistent with its plain language and its purpose.

5. Whether a District Court can grant summary judgment for the plaintiffs on defendants’ defenses when a genuine issue of material fact exists.

6. Whether an individual who, in good faith, exhaustively studies the copyright law, seeks advice of copyright counsel, and concludes that his activities are protected by §107, is a willful copyright infringer.

 


STATEMENT OF THE CASE

This is a copyright case. At issue is whether students and professors, who have a right to reproduce excerpts from copyrighted works without seeking permission from or paying fees to copyright owners for purposes such as “teaching (including multiple copies for classroom use)” under §107 of the U.S. Copyright Act of 1976, may utilize the printing services of a third party in order to facilitate access to such excerpts. Defendant Michigan Document Services, Inc. (“MDS”) is that third party.

The plaintiffs are three publishers who allegedly own copyrights in the six works at issue in this litigation. The publishers have sued MDS and its president, Jim Smith, for copyright infringement, alleging that MDS may not make its printing services available to students and professors except under terms set by the publishers.

Through affidavits, deposition testimony, and other evidence appropriate for a motion for summary judgment, defendants have established that use of the excerpts at issue falls squarely within the fair use rights of the Copyright Act. Defendants have established a factual basis for several recognized defenses to copyright infringement, such as laches, unclean hands, and copyright misuse. Defendants have also established facts and arguments showing that if the Copyright Act is interpreted so as to deny the right of fair use under the facts of this case, the Copyright Act would be unconstitutionally vague because any such construction is completely contrary to its plain language.

The publishers, on the other hand, assert that defendants’ printing services can never be used as a part of the professors’ and students’ fair use rights. The publishers contend that they must be consulted, and paid whatever amount they demand, before there is any use of any portion of any work in which they hold copyright, and that they may grant or withhold permission to use excerpts on any grounds they desire.

The publishers fail to understand the most basic proposition in this case — that fair use of a work is a right owned by the public, a right that may be exercised freely without control by the copyright holder. Fair use means that publishers cannot demand that permission be sought, or permission fees be paid, or any other restriction be imposed. Fair use is the means by which the public is enriched by its access to creative works.

COURSE OF PROCEEDINGS AND DISPOSITION IN DISTRICT COURT

Plaintiffs filed their lawsuit and a motion for preliminary injunctive relief on February 27, 1992. On April 1, 1992, the District Court heard oral argument (but no testimony) on plaintiffs’ motion and entered a preliminary injunction enjoining defendants from reproducing any excerpts of works in which plaintiffs held copyright. Both parties conducted discovery. On January 20, 1993, plaintiffs filed a motion for summary judgment on liability, willfulness and damages. On February 12, 1993, defendants filed a motion for summary judgment on grounds of vagueness and a motion for partial summary judgment on willfulness. In response to plaintiffs’ motion for summary judgment, defendants requested that if summary judgment were to be granted for any party, that the District Court grant defendants summary judgment on liability, as permitted by Fed. R. Civ. P. 56.

The Court referred the pending motions to Magistrate Judge Thomas Carlson who heard oral argument on June 7, 1993. On December 17, 1993, the Magistrate Judge issued a Report and Recommendation, recommending the grant of plaintiffs’ motion for summary judgment, the grant of defendants’ motion for partial summary judgment as to willfulness, and the denial of defendants’ motion for summary judgment on grounds of vagueness. On January 5, 1994, the parties filed their objections to the Report and Recommendation.

On March 1 and March 7, 1994, the Supreme Court issued unanimous rulings in the copyright cases Fogerty v. Fantasy, Inc., ___ U.S. ___, 114 S.Ct. 1023 (1994) and Campbell v. Acuff-Rose Music, Inc., ___ U.S. ___, 114 S.Ct. 1164 (1994). On March 9 and March 18, 1994, the parties filed supplemental briefs with the District Court addressing those two Supreme Court rulings.

On June 9, 1994, the District Court issued an Order and Judgment granting plaintiffs’ motion for summary judgment as to liability and willfulness, and awarding them damages and attorneys’ fees (“Order”). Defendants appeal from that judgment.

STATEMENT OF THE FACTS

This case takes place in the context of university education. It focuses on the reading materials assigned by professors to students who have enrolled in particular classes. Professors have the responsibility of selecting and assigning appropriate educational materials for students enrolled in their classes. (R.61 Ex.A, Decl. Dawson ¶2, Warner ¶2, Kinder ¶2). In addition to assigning course materials such as books, professors often select and assign readings from journals and newspapers, course notes, syllabi, sample test questions, and references to further books and articles. Some assigned readings are copyrighted, some are not. The collected materials are referred to as “coursepacks” (R.100 Order at P.2).

The record contains over 500 declarations from professors and students about the educational use of coursepacks. (R.69 Ex.B, Ex.C; R.61 Ex.A; R.62-R.64). According to the professors who selected the excerpts at issue in this litigation, and to students and other professors who use coursepacks, the coursepack materials are used solely for educational purposes: exposure to theories, facts, ideas, and opinions; contribution to the students’ overall understanding of a discipline; comparison with other assigned readings; maintenance of the currency of materials discussed in the classroom; scholarship; and research. (R.61 Ex.A., Decl. Liker ¶3; Wellman ¶2; Warner ¶3; Squier ¶¶2-3; Dawson ¶¶2-4; Kinder ¶¶2-3, 6; Lieberman ¶¶3, 5). For example, Professor Dawson assigned nine books and a coursepack with twenty-nine excerpts for students enrolled in his political science course at The University of Michigan, “Black Americans and the Political System.”[ FN 1 ] He stated that Black politics is a very recent discipline. To understand it, students must understand aspects of psychology, sociology, anthropology, economics, philosophy, law, political science, and other disciplines. Professor Dawson cannot find everything his students need in a textbook. He uses excerpts to provide the theoretical framework and facts needed to develop students’ critical thinking skills, and to allow them to compare various points of view. (R.61 Ex.A., Decl. Dawson ¶¶2-4).

The professors who use MDS’s printing services inform the students that either they can make a personal copy of the assigned readings from the reserve reading room at the university library, or they can purchase a personal copy at MDS. Because it is cheaper and more efficient for the students to have MDS do their copying for them, and because MDS provides additional document organization services to the students, many students will pick up their copy of assigned readings from MDS. MDS does not sell to the public. (R.100 Order at P.2, R.47 Smith Dep. at P.452). Coursepacks allow “timeshifting” of students’ access to those materials so they can be read at a time and location convenient for the students. (R.61 Ex.A, Decl. Liken ¶5,[ FN 2 ] Squier ¶5, Wellman ¶4).

Professors select and organize the assigned reading material, deliver their copies to MDS, and request that MDS reproduce copies for use by those professors’ students. From the materials MDS creates a table of contents, identifies excerpts by author and title, numbers the pages, and then binds the material together so that the individual pages are not lost. Professors do not receive compensation for bringing their coursepacks to MDS. (R.100 Order at P.2, R.54 Decl. Smith ¶40). MDS’s provision of printing and document organization services to students and professors is the sole basis for plaintiffs’ suit against MDS and Mr. Smith.

The publishers concede that they are unable to document even one lost sale of any copyrighted work at issue as a result of MDS’s sale of coursepacks. (Hearing before Magistrate Judge Carlson at TR 33-35, “Hearing”). Defendants have shown that coursepacks increase the sale of books and increase the market for the particular work that was excerpted. (R.61 Ex.A, Decl. Liken ¶4, Squier ¶4, Wellman ¶3, Kimeldorf ¶5).

Authors benefit from the inclusion of excerpts of their works in coursepacks. Coursepacks allow authors to make greater contributions to their disciplines, to receive additional feedback from their professional colleagues, and to enhance their professional reputations and career opportunities. Authors desire that their works be excerpted for use in classes where the professor would not otherwise assign their book. (E.g., R.61 Ex.A, Decl. Dawson ¶7, Kinder ¶6, Lieberman ¶8). They agree that the activities of MDS and Mr. Smith are consistent with the copyrights of authors. (R.61 Ex.A, Decl. Lofland ¶¶4, 9; Brown ¶3). Indeed, the author of one of the works at issue advocates MDS’s activities and desires that his work be photocopied and sold to students at the request of professors. (R.61 Ex.A, Decl. Brown ¶3).

The Declaration of Mr. Smith recounts his extraordinary efforts to understand the Copyright Act. (R.54 Decl. Smith). In the twenty years that Mr. Smith has been involved in or associated with the coursepack business, he has believed in good faith that the reproduction of excerpts of materials in connection with the production of coursepacks was fair use under the Copyright Act. (Id. at ¶43). Unlike many copyright defendants, Mr. Smith actually read §107 of the Copyright Act years before he was sued. He believed that the language in the statute endorsing the reproduction of copies of materials for “teaching,” including “multiple copies for classroom use,” authorized the production of coursepacks for students at the request of professors. He considered the four statutory factors and concluded that MDS’s coursepacks were fair use. (Id. at ¶8).

After the decision in Basic Books, Inc. v Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991) (“Kinko’s“), Mr. Smith undertook a substantial and serious effort to educate himself further about copyright law.[ FN 3 ] Mr. Smith also sought advice of copyright counsel so as to better understand the legal significance of the Kinko’s decision. His attorney, Lawrence Jordan, told Mr. Smith that the Kinko’s decision was not binding on him or on a federal district court sitting in Michigan, that it was flawed in several respects, and that it could be overturned if appealed. Mr. Jordan stated that the fair use doctrine was considered by judges and scholars to be vague, difficult to apply, and the most “troublesome” area of copyright law. Mr. Jordan has testified that Mr. Smith committed himself to the development of an understanding of copyright law, and undertook to educate himself to an unusual degree. (R.54 Decl. Jordan ¶¶3, 5-7).

Mr. Smith understood the publishers’ legal position and after extensive investigation he concluded that it was wrong.[ FN 4 ] He wrote a “White Paper” about copyright and the case against Kinko’s which he has distributed (R.55 Ex.C), and wrote a letter about copyright and coursepacks to the editor of the Chronicle of Higher Education (R.55 Ex.B).[ FN 5 ] As a result of publicly expressing those well researched beliefs, Jim Smith and MDS were sued by plaintiff publishing companies.

STANDARD OF REVIEW

The Court of Appeals reviews the grant of summary judgment by the District Court in this case de novo. National Rifle Ass’n of America v. Handgun Control Fed’n, 15 F.3d 559 (6th Cir. 1994), cert. denied, 1994 U.S. LEXIS 5520 (Oct. 3, 1994). This Court must decide whether the moving party has met the “burden of showing that the pleadings, depositions, answers to interrogatories, admissions and affidavits in the record, construed favorably to the nonmoving party, do not raise a genuine issue of material fact for trial.” Boretti v. Wiscomb, 930 F.2d 1150, 1156 (6th Cir. 1991). The Court of Appeals must believe the evidence of the nonmovants, and draw all justifiable inferences in their favor. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 2513 (1986), Taft Broadcasting Co. v. United States, 929 F.2d 240, 247 (6th Cir. 1991). The Court’s “function is not . . . to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249, 106 S.Ct. at 2511. To do otherwise would usurp the power of the jury.

The evidence in the record indicates that summary judgment should not have been granted to the plaintiffs, that instead summary judgment should have been granted to defendants, and that as a matter of law defendants were not willful infringers.

ARGUMENT

I.THE BASIS FOR UNDERSTANDING AND DETERMINING FAIR USE IS THE CONSTITUTION, THE COPYRIGHT ACT, AND SUPREME COURT DECISIONS.

The purpose of copyright law is the promotion of learning. U.S. Const. art. I, §8, cl.8., Acuff-Rose, 114 S.Ct. at 1169, Fogerty, 114 S.Ct. at 1029, Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S. Ct. 1282, 1290 (1991). The primary purpose of copyright is not the protection of financial interests of authors or publishers. Id. Any interpretation of the fair use provisions of the Copyright Act that undermines or frustrates the promotion of learning, that is a disincentive for authors to create new works, and that disregards the plain meaning of §107, is incorrect.

A.There is no basis for the publishers’ “copyright-as-property” argument.

The Copyright Clause of the Constitution both establishes and limits the power of Congress to grant copyright protection:

“The Congress shall have the Power . . . To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” U.S. Const. art. I, §8, cl.8.

The Constitution thus authorizes Congress to grant copyrights to promote the public welfare by the advancement of knowledge. Even as the Clause provides for copyrights for authors, it does not create a right over which authors have absolute control:

“All reproductions of the work, however, are not within the exclusive domain of the copyright owner; some are in the public domain. Any individual may reproduce a copyright work for a ‘fair use’; the copyright owner does not possess the exclusive right to such a use.” Sony Corp. of America v. Universal Studios, Inc., 464 U.S. 417, 432, 104 S.Ct 774, 784 (1984).In Feist, the Supreme Court again rejected a property rights view of copyright and reiterated the public benefit framework:

“[the use of the fruit of another's labor] is not some unforeseen byproduct of a statutory scheme. It is, rather, the essence of copyright, and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts.’ Art.I, §8, cl.8.” Feist, 111 S.Ct. at 1290 (internal citations omitted).

On March 1, 1994, a unanimous Supreme Court confirmed in Fogerty that the public good of copyright, not the private economic interests of copyright holders, is the point of reference for adjudicating a fair use case:

“We have often recognized the monopoly privileges that Congress has authorized . . . are limited in nature and must ultimately serve the public good . . . .

‘The limited scope of the copyright holder’s statutory monopoly . . . reflects a balance of competing claims upon the public interest . . . private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts . . . .’

* * * *
‘The primary objective of copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts.’ . . .

[C]opyright law ultimately serves the purpose of enriching the general public through access to creative works . . . .” Fogerty, 114 S.Ct. at 1029.

Copyright’s constitutional purpose is “fulfilled” by the “fair use of copyrighted materials.” Acuff-Rose, 114 S.Ct. at 1169. The fair use factors in §107 “are to be explored, and the results weighed together, in light of the purposes of copyright.” Id. at 1171 (emphasis added).[ FN 6 ]

In a society that values work and rewards authors with copyrights, it may seem counterintuitive that persons other than the copyright owner have certain absolute rights to use the fruits of the labors of those authors. However, it is those fair use rights, embodied in §107, that ensure that the purpose of copyright — the promotion of learning — is fulfilled. Otherwise copyright law “would stifle the very creativity which that law is designed to foster.” Id. at 1170.

B.The Copyright Act states that the reproduction of copyrighted works for classroom use is a fair use. There is no prohibition against using third-party services to obtain those copies.

1.An analysis of the Copyright Act is guided by the standard rules of statutory construction.

The Copyright Act defines the rights of authors (§106), makes those rights subject to fifteen statutory limitations (§107-§120), confirms the rights of others to make fair use of copyrighted works (§107), and identifies statutory limitations on the types of works that are entitled to copyright (§§102 and 103).

An understanding of the Copyright Act, like an understanding of any statute, begins with the application of standard rules of statutory construction.

First, the meaning of a statute begins with the language of the statute itself. Community for Creative Non-Violence v. Reid, 490 U.S. 730, 739, 109 S.Ct. 2166, 2172 (1989). Section §107 states:

“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.” (emphasis added).

Applying the first rule of construction, it is clear that the fair use of a copyrighted work is not an infringement of copyright. Statutory language could not be more clear.

The language also clearly indicates that Congress singled out certain uses of copyrighted works as the sorts of copying generally found to be fair, Acuff-Rose, 114 S.Ct. at 1170, and one of those favored uses is for “teaching (including multiple copies for classroom use).”[ FN 7 ]

The plain language of §107 also authorizes “reproduction in copies” (ordinarily a §106 right) as a part of the fair use right. It does not require that the person making the fair use be the same person making the copy for the user. Finally, the statute provides that the right of fair use exists notwithstanding the rights of authors. Thus, authors do not have control over all uses of their work, and have no control over fair uses.

Second, a “statute must, if possible, be construed in such a fashion that every word has some operative effect.” United States v. Nordic Village, Inc., ___ U.S. ___, 112 S.Ct. 1011, 1015 (1992). “An interpretation that needlessly renders some words superfluous is suspect.” Crandon v. United States, 494 U.S. 152, 171, 110 S.Ct. 997, 1008 (1990). Applying this rule it is clear that the rights of authors in §106 [ FN 8 ] are subject to the fair use rights granted to the public (and fourteen other rights in §§108 – 120). The Supreme Court has confirmed that fair use rights will sometimes predominate over §106 rights:

“Those sections describe a variety of uses of copyrighted material that ‘are not infringements of copyright’ ‘notwithstanding the provisions of section 106.’ The most pertinent in the case is §107, the legislative endorsement of the doctrine of fair use.” Sony, 104 S.Ct. at 791.

Any interpretation of the Copyright Act prohibiting professors and students from using multiple copies of copyrighted works for purposes such as teaching would render the “subject to” language of §106 and the “notwithstanding” language of §107 superfluous, and violate the rules of statutory construction.

Third, “the plain meaning of legislation is conclusive,” Ardestani v. I.N.S., ___ U.S. ___, 112 S.Ct. 515, 520 (1991) and “the sole function of the court is to enforce it according to its terms.” United States v. Ron Pair Enterprises, Inc., 489 U.S. 235, 241, 109 S.Ct. 1026, 1030 (1989) (citation omitted). “[C]ourts must presume that the legislature says in a statute what it means and means in a statute what it says there.” Connecticut Nat’l Bank v. Germain, ___ U.S. ___, 112 S.Ct. 1146, 1149 (1992). There is a strong presumption that the plain language itself expresses congressional intent. Ardestani, 112 S.Ct. at 520.

Here, the unambiguous language in §107 renders unnecessary, and indeed improper, any resort to legislative history, committee reports, or third party comments which seek to alter the plain meaning of §107.

Fourth, a statute that is clear in language and meaning precludes a court from imposing on the statute the court’s own view of the reasonableness or equity of the result. “Judicial perception that a particular result would be unreasonable may enter into the construction of ambiguous provisions, but cannot justify disregard of what Congress has plainly and intentionally provided.” Commissioner v. Asphalt Prod. Co., 482 U.S. 117, 121, 107 S.Ct. 2275, 2278 (1987).

Here, the District Court was unable to accept the fact that students and professors could simply excerpt a copyrighted work for classroom use without asking permission and without paying any fees, have MDS make a copy for their educational use, and pay MDS for the printing costs. The court’s perception of what was reasonable caused it to disregard the plain language of §107.

Fifth, where a statute embodies competing values, deciding which values will be sacrificed to the achievement of a particular objective is the very essence of legislative choice. Even the Supreme Court does not allow the purported purpose of a statute to control over the plain language of the text. See, West Virginia Univ. Hosps. v. Casey, ___ U.S. ___, 111 S.Ct. 1138, 1147 (1991). Thus, judicial preference for the rights of authors over the fair use rights granted in §107, especially where the preference will result in the very uses described in §107 becoming the exclusive right of copyright owners, would usurp the role of Congress. “Strict adherence to the language and structure of the [Copyright] Act is particularly appropriate where, as here, a statute is the result of carefully crafted compromises.” Community for Creative Non-Violence, 490 U.S. at 748 n.14.

2.The fair use rights of the professors, students, and MDS are intertwined.

The publishers advocate that certain restrictions upon fair use be read into §107. Specifically, they want this Court to announce that fair users may not pay third parties for the printing services needed to “reproduce copies” without losing their fair use rights. This is nonsense, and dangerous nonsense at that.

It is nonsense because the statute contains no such restriction. There is nothing in the Constitution, the Copyright Act, or in Supreme Court case law to suggest that fair use turns on whether the photocopy machine printing the fair use copies (or the person operating the machine) is located at the university library or at MDS’s office. The machine is merely the means by which the user gets access to the copy. Machines are not uses: teaching, parody, or scholarship are uses. The publishers also complain that MDS makes money, as if money made in the course of the exercise of the right of fair use is somehow the property of the copyright owner. However, all of the enumerated uses “are generally conducted for profit in this country.” Acuff-Rose, 114 S.Ct. at 1174 (citation omitted). The Copyright Act does not entitle copyright holders to receive fees for printing. Sony, 464 U.S. at 432-433.

It is dangerous nonsense because it is having the real effect, right now, of limiting access to information, harming education, discouraging authors, and injuring business through illegal tactics. (R.61 Ex.A, Decl. Kimeldorf ¶9, Warner ¶7; R.54, Decl. Ternes ¶7). It is insidious because it is using the imprimatur of the federal judiciary to turn the Copyright Act from a vehicle for dissemination of knowledge to a scheme for generating fees for publishers.

The copyright activities of the professors, students, and defendants are inextricably intertwined. In Metromedia, Inc. v. City of San Diego, 453 U.S. 490, 101 S.Ct. 2882 (1981), the Supreme Court noted the relationship between those who desire to exercise their First Amendment rights of speech and access to information (here, the students and professors) and those who have a “commercial interest” in that protected speech (here, MDS). Id., at 503-505 & n.11. It is beyond question that defendants may raise the arguments of the professors and students in addition to defendants’ own First Amendment rights. “Were it otherwise, newspapers, radio stations, movie theaters and producers — often those with the highest interest and the largest stake in a First Amendment controversy — would not be able to challenge government limitations on speech as substantially overbroad.” Id.

C.The Supreme Court has held that a fair use adjudication rejects strict views of copyright ownership, and requires a case-by-case analysis.

Although it is not necessary that this Court look beyond the plain language of §107, the Supreme Court’s treatment of cases where the alleged infringement was expressly permitted by §107 makes it clear that (1) the printing of coursepacks by MDS is consistent with, and furthers, the public policies embodied in the Copyright Act; and (2) the public policy considerations embodied in §107 are influential in balancing the interests in a copyright case:

 

“The fair use doctrine thus ‘permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.’” Acuff-Rose, 114 S.Ct. at 1170 (citation omitted) (bracket in original).

In Acuff-Rose the Supreme Court confirmed that the task of evaluating fair use cases “is not to be simplified with bright line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis.” Id. at 1170, citing Harper & Row, 471 U.S. 539, 560, Sony, 464 U.S. 417, 448 & n.31, “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.” Acuff-Rose, 114 S.Ct. at 1170-1171.

Even if the District Court failed to understand the constitutional framework of copyright and the plain language of the Copyright Act, it is difficult to understand how that Court ignored the testimony of the authors, when:

 

“To serve the constitutional purpose, ‘courts in passing upon particular claims of infringement must occasionally subordinate the copyright holder’s interest in a maximum financial return to the greater public interest in the development of art, science and industry.’” Williams & Wilkins Co. v. United States, 487 F.2d 1345, 1352 (Ct. Cl. 1973) (citing Berlin v. E.C. Publications, Inc., 329 F.2d 541, 544 (2d Cir. 1964)), aff’d by an equally divided court, 420 U.S. 376, 95 S.Ct. 1344 (1975).

Nearly two hundred authors (including the author of one of the works at issue) testified that the publishers’ inflated view of their rights undermines the authors’ reasons for writing and is a misuse of copyright. (R.61 Ex.A, Decl. Kinder ¶¶6-7). The District Court’s adoption of the publishers’ view has extremely serious consequences for the promotion of learning.

Like the language of the statute itself, the facts of this case do not lend themselves to the District Court’s rigid adoption of the publishers’ bright line rules. Instead, when the facts set forth in the record are understood in relationship to each other, to the fair use factors, and to the promotion of education, the Court must conclude that the coursepacks in this case are a fair use.

II.APPLICATION OF THE FAIR USE FACTORS CLEARLY SHOWS THAT DEFENDANTS’ ACTIONS ARE NOT AN INFRINGEMENT.

The fact that defendants’ activities fall within the scope of the uses enumerated in the first sentence of §107 is important for several reasons. First, those uses are “the sorts of copying that courts and Congress most commonly had found to be fair uses.” Acuff-Rose, 114 S.Ct. at 1170,[ FN 9 ] accord National Rifle Ass’n, 15 F.3d at 561 (enumerated uses are “illustrations of the sorts of uses likely to qualify as fair uses”). Any analysis of §107 that ignores or fails to give preferential treatment to the enumerated uses must be rejected. Second, as the Supreme Court has held, the statutory factors are to be “explored, and the results weighed together, in light of the purposes of copyright.” Acuff-Rose, 114 S.Ct. at 1171 (emphasis added).

A.First factor: the purpose and character of the use.

1.Students and professors use the excerpts for educational, nonprofit purposes. The excerpts do not supersede the original works.

As noted, supra, the “use” means the use of the excerpts by the students, not the manner in which the students obtain their copy. Moreover, the Supreme Court has stated that the inquiry into the first statutory factor “may be guided by the examples given in the preamble to §107.” Id. Because coursepack excerpts are “multiple copies for classroom use,” they are the very sort of use contemplated by Congress in enacting §107. Therefore, the first factor favors defendants conclusively.[ FN 10 ]

The Supreme Court in Sony noted that the “central purpose of this investigation [into the first factor] is to see . . . whether the new work merely ‘supersedes the objects’ of the original creation . . . .” Id. (citing Folsom v. Marsh, 9 F.Cas. 342, 348 (CCD Mass. 1841)). Here, even the District Court acknowledged that the excerpts “are truly ‘excerpts’ and do not purport to be replacements for the original works.” (R.100 Order at P.9).

In Sony, the Supreme Court noted that the purpose of the use should serve the “public interest in increasing access” in a manner “consistent with the First Amendment policy of providing the fullest possible access to information . . .” Id. at 425.[ FN 11 ] Reproducing excerpts for students obviously fulfills the “access” and “dissemination” elements of the “purpose of the use” inquiry. The students’ access to excerpts through the university library, however, does not fulfill this purpose adequately, because the reserve reading room does not provide adequate access. (R.61 Ex.A, Decl. Liken ¶5, Squier ¶5). Professors can have 450 students enrolled in one class. (R.61 Ex.A, Decl. Lieberman ¶6). Even if several copies of an excerpt are put on reserve in the library, students must make repeated trips to the library until the reading materials are available, waste their time making their own personal copy (at a greater expense than if it were purchased from MDS and with a poorer quality product), resulting in their being less prepared and informed than if they purchased a coursepack at MDS. (See R.61 Ex.A, Decl. Squier ¶¶5-7, Liken ¶¶5 8, and Mandl ¶¶4-6). There are often not enough copies of library materials, and students can use them only for a few hours at a time. (R.61 Ex.A, Decl. Squier ¶7). Some libraries even refuse to allow materials to be placed on reserve due to the “intimidation tactics of publishers.” (R.61 Ex.A, Decl. Lofland ¶5). Library materials are often torn, cut out, or stolen. (R.61 Ex.A, Decl. Squier ¶7; R.69 Ex.B, Decl. Barrows Supp. Comments P.2).

Coursepacks enable students to “timeshift” their reading from the library to a more private and convenient place to study. (R.61 Ex.A, Decl. Liken ¶5, Squier ¶5, Wellman ¶4). Timeshifting copyrighted materials was expressly found to be noninfringing in Sony, 464 U.S. at 449-450.

Students who are not able to pick up their assigned readings at MDS often make their own copy, either from the library or from fellow students, and the publishers neither demand nor receive fees, (R.61 Ex.A, Decl. Squier ¶6). Additionally, when students make copies at the library photocopy machine, they still have to pay for each page that is reproduced. Thus, third parties always profit from the reproduction of the excerpts, whether it is the company selling or leasing the machine; selling paper, toner, replacement parts and services; or making the copies of the excerpt. The argument, then, that no one can “make money” off the copies of excerpts is not only legally unsound, it demonstrates a failure to grasp what in fact must take place in order for students to obtain copies of excerpts.

The “character of the use” inquiry also examines the motive of the user. Harper & Row, 471 U.S. at 562. The motive of the professors and students is to obtain access to information and ideas. MDS’s “motive” is to be fairly compensated for the printing services it provides.

Good faith of the alleged infringer is also a relevant inquiry in determining the “character of the use.” Harper & Row, 471 U.S. at 562-563. Because of the time and money Jim Smith spent to understand the copyright law and its relationship to his business activities, his good faith cannot be doubted. Indeed copyright scholars around the country support his conclusions. See Brief of Amici Curiae.

2.MDS does not use the excerpts, MDS prints the excerpts.

The first factor examines the use of the work, not the means by which the users of the works obtain their copies of the work. Here, the excerpts are used by the students and professors; they are printed by MDS.

Professors can make the excerpts available to their students in the following ways: (1) professors make copies and distribute them in class; (2) professors put the materials on reserve reading at the university library (in which case the students can make their own personal copy); (3) professors drop the excerpts off at MDS for MDS to make the copy for the student. In the first example, the professors ministerially exercise the §106(1) function of “printing” (i.e., “reproduction in copies”) for teaching, as authorized by §107. In the second example, the students ministerially exercise the §106(1) function in order to use the excerpt as authorized by §107. In the third example, MDS ministerially exercises the §106(1) function on behalf of both the professors (who drop off the materials) and the students (who pick up the materials) in order to assist their use as authorized by §107.

The distinction between a printer and a publisher is important in copyright law because publishersuse” the work; printers do not. Publishers select or design works and materials to be included in a publication. They control content through selection and editing; they select authors, specify format and illustrations. They arrange for printing, distribution and advertising of the completed work. They set the publication schedule, and the suggested retail and wholesale prices for the published works. See, e.g., First Comics, Inc. v. World Color Press, Inc., 884 F.2d 1033 (7th Cir. 1989), cert. denied, 493 U.S. 1075, 110 S.Ct. 1123 (1990).

Printers, on the other hand, provide only one or two steps in this process. Their printing services typically involve receiving the materials created and supplied by others, and providing paper, ink, staples, and labor. Those activities are the provision of services for a fee, and are not the use of the tangible, printed goods. Id.

The uncontested declarations prove that MDS is a printer. MDS does not author, select, edit, or design the excerpts or coursepacks, or specify format or illustrations. MDS does not incorporate the excerpts into any works of its own — it simply makes the excerpts available to the persons for whom they were created. MDS charges students a flat, per-page service fee, which is based upon MDS’s costs of supplies (paper, ink, binding, equipment), and overhead. Fees do not vary based upon which excerpt is reproduced; to the contrary, MDS charges the same for even blank pages in a coursepack. (R.10, Smith Decl. ¶¶3, 4, 6).[ FN 12 ]

3.Whether a use is transformative is not relevant in this case.

Until Acuff-Rose, copyright plaintiffs routinely argued that only a “transformative” use could be fair. Publishers made that same argument here, even after the Supreme Court noted that “[t]he obvious statutory exception to this focus on transformative uses is the straight reproduction of multiple copies for classroom distribution.” Acuff-Rose, 114 S.Ct. at 1171 n.11.[ FN 13 ]

B.Second factor, the nature of the work: the works excerpted were historical and factual and not fantasy or fiction.

The second statutory factor, the “nature of the work,” springs from the constitutional purpose of copyright because it emphasizes the importance of having access to (and use of) information, facts, and ideas.

1.The excerpts are primarily informational, and there is a greater right to use informational excerpts.

The scope of copyright protection for factual and historical works is narrower than the scope of copyright protection for works of fiction or fantasy. National Rifle Ass’n, 15 F.3d at 562 (citing Harper & Row, 471 U.S. at 563), Feist 111 S.Ct. at 1287 (a work that is entirely factual may have no copyright protection at all). Thus, the critical aspect of the “nature of the work” inquiry is whether the excerpts are reproduced from a work that is primarily factual, or one that is fictional.

The works at issue in this litigation fall well within the factual side of the continuum from facts to fantasy, (R.61 Ex.A, Decl. Kinder ¶3, Dawson ¶3, Lieberman ¶¶2, 3; R.100 Order at P.9 – the excerpts are “historical or educational and not fictional;” see also R.8, Decl. Rauchberg A-F, the six excerpts at issue).[ FN 14 ] But even where a work is considered “creative” and “closer to the core of intended copyright protection,” Acuff-Rose, 114 S.Ct. at 1175, the second factor need not favor the copyright holder, Id., and does not do so here.

The educational materials selected by the professors for their students are significantly further from the “core” of copyright protection than was the “Pretty Woman” song in Acuff Rose. The excerpts were selected for their ideas, information, opinions, and other uncopyrightable elements embodied in each excerpt. See 17 U.S.C. §102(b), (see also R.61 Ex.A, Decl. Dawson ¶2, Kinder ¶2, Lieberman ¶2).

2.All of the excerpts are from published works; fair users may use more of a work if it is published.

The inquiry into the “nature of the work” also looks at whether the works are published or unpublished. Harper & Row, 471 U.S. at 564. All the excerpts were taken from published works. Defendants have greater latitude in reproducing published works. Id.

3.Two of the works are unavailable; fair users may use more of out of print and unavailable works.

Also relevant to the “nature of the work” is whether the work is available. It is uncontested that two of the works were taken out of print by plaintiff Macmillan (Hearing TR 66,76-77) and cannot be purchased by students and professors. The scope of the fair use right is greater if the work is inaccessible. Harper & Row, 471 U.S. at 553.

C.Third factor: the amount and substantiality of the portion used in relation to the copyrighted work as a whole.

The third statutory factor looks at whether the “‘quantity and value of the materials used’ . . . are reasonable in relation to the purpose of the copying.” Acuff-Rose, 114 S.Ct. at 1175 (citing Folsom, 9 F.Cas. at 348). The Supreme Court’s analysis rejects any test based on percentages or number of words because “the extent of permissible copying varies with the purpose and character of the use.” Id. The publishers’ and District Court’s “percentage” or “page-counting” approach is incompatible with the Court’s emphasis in Acuff-Rose on the use of a “reasonable” amount of material, and in Feist on the requirement that only original authorship can be protected.

The Supreme Court noted that the extent of permissible copying varies with the purpose and character of the use, and where the use falls within the enumerated uses in §107, a greater amount of the copyrighted work could be used and still be fair. Acuff-Rose at 1176 (“we fail to see how the copying can be excessive in relation to its parodic purpose, even if the portion taken is the original’s ‘heart.’”); Sony, 464 U.S. at 450 (reproduction of entire work for private use “does not have its ordinary effect of militating against a finding of fair use”).

The testimony of the professors who selected the excerpts at issue is uncontroverted and conclusive evidence — they selected limited portions and only what was necessary to accomplish their pedagogical purpose. (R.61 Ex.A, Decl. Dawson ¶4, Kinder ¶3, Lieberman ¶5). They stated that there was no “heart” of the educational work.[ FN 15 ] Id. The coursepack excerpts are “truly ‘excerpts’ and do not purport to be replacements for the original works.” (R.100 Order at P.2) Each professor who excerpted the works at issue had previously decided not to assign the books from which the excerpts were taken. (R.61 Ex.A, Decl. Dawson ¶2, Kinder ¶2, Lieberman ¶¶2-3).

Additionally, even if some page-counting method were proper, this factor would not favor plaintiffs. Original authorship is a constitutional requirement for copyright ownership, and there is a constitutional right for the public to use uncopyrightable material. Feist, 111 S. Ct. 1282.[ FN 16 ] Plaintiffs have no copyright in any portions of the works which is not original to the authors, and those portions cannot be considered in any infringement analysis. The excerpts reproduced contain portions of material which are not protected. For example, the work by Nancy Weiss which was excerpted by Professor Dawson contains entire pages of public domain data, a two-page poem by Langston Hughes, photographs, cartoons, and direct quotations from third-party materials. Fully one-third of the excerpt is not original to Ms. Weiss. Additionally, there is a significant amount of paraphrasing of third-party materials.

In light of the small amount of original material in the excerpts in relation to the works as a whole, the educational purpose for which the excerpts were used, the factual and historical nature of the excerpts, and the fact that there was no use of the “heart” of the works, this third factor favors defendants as a matter of law.

D.Fourth factor: the effect of the use upon the potential market for or the value of the copyrighted work.

The fourth statutory factor is the “effect upon the market for or the value of the copyrighted work.” It has been held to be “the single most important element of fair use.” National Rifle Ass’n, 15 F.3d at 562 (quoting Harper & Row, 471 U.S. at 560). This factor turns on “the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” Acuff-Rose, 114 S.Ct. at 1170 (citing Folsom, 9 F.Cas. at 348).

The fourth factor inquiry focuses on “the copyrighted work,” 17 U.S.C. §107(4), and not some fragment of the work.[ FN 17 ] The publishers have not been able to document the loss of a single sale of any work at issue. They have failed to meet their burden of proof on this factor. Sony, 464 U.S. at 421, 454.

Not only have plaintiffs lost no sales of the works at issue, defendants have shown that the use of coursepacks increases the value of, and the market for, the copyrighted work: as a result of using coursepacks, students have purchased copies of the work from which the excerpt was obtained, have purchased more books by the author of the excerpt, and have purchased more books on the subject matter of the excerpt. (R.61 Ex.A, Decl. Wellman ¶3, Squier ¶4, Mandl ¶3, Liken ¶4), see Nat’l Rifle Ass’n, 15 F.3d at 362 (use of list, if it did anything, helped create a market for the plaintiff), Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989) (recognizing relevance of increased sales through fair use). The widespread use of coursepacks over the last twenty years (R.54, Decl. Ternes ¶4) has worked to the advantage of the publishers by increasing the sales of books.

Unable to prove lost sales, the publishers bootstrap a theory of “injury” by arguing they did not receive the “permission fees” that they want to charge those who wish to copy an excerpt. Williams & Wilkins debunked that circular argument twenty years ago. There can be no claim for permission fees unless the use would otherwise be an infringement:

 

“It is wrong to measure the detriment to plaintiff by loss of presumed royalty income — a standard which necessarily assumes that plaintiff had a right to issue licenses. That would be true, of course, only if it were first decided that the defendant’s practices did not constitute ‘fair use.’ In determining whether the company has been sufficiently hurt to cause these practices to become ‘unfair,’ one cannot assume at the start the merit of the plaintiff’s position, i.e., that plaintiff had the right to license. That conclusion results only if it is first determined that the photocopying is ‘unfair.’” Williams & Wilkins, 487 F.2d at 1357 n.19.

The flaws in the publishers’ circular argument are obvious. First, the argument has as its premise the legal conclusion that the use of excerpts in coursepacks is not fair use and, therefore, allows them to charge permission fees. The Court cannot allow the publishers to use “argument” as evidence. Second, the argument applies to all uses, no matter how small (including fair uses) and eliminates any meaningful application of the fourth fair use factor.[ FN 18 ]

Third, the argument requires that a copyright owner be entitled to control all uses of its work, a proposition the Supreme Court has repeatedly rejected:

“[Copyright] protection has never accorded the copyright owner complete control over all possible uses of his work. . . . While the law has never recognized an author’s right to absolute control of his work, the natural tendency of legal rights to express themselves in absolute terms to the exclusion of all else is particularly pronounced in the history of the constitutionally sanctioned monopolies of the copyright and the patent.” Sony, 464 U.S. at 432-433 and n.13. 
“From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts. . . .’” Acuff-Rose at 1169.

Fourth, the publishers may not leverage their statutorily derived power in their work to those uses expressly reserved by Congress as the province of the fair user. Such leveraging is exactly what plaintiffs are attempting to do in the present case.

Fifth, in Acuff-Rose, 114 S.Ct. at 1178, the Supreme Court held that some injuries to a market are not “a harm cognizable under the Copyright Act” because they are not of a type which the copyright laws are intended to prevent. Copyright is not intended to prevent “perceived injury” arising from fair use and particularly from the activities — such as scholarship, criticism, or multiple copies for classroom use — specifically enumerated in §107[ FN 19 ]. Therefore, the argument by plaintiffs that defendants’ copying has injured their potential market for excerpts fails because such injury is not copyright injury.

Accordingly, the fourth factor is unquestionably in favor of defendants. Plaintiffs concede they have lost no sales of the work, and defendants have shown that its activities actually increase the sales and value of plaintiffs’ works.

E.Unenumerated fair use factors favor defendants.

Section 107 states that the four statutory factors are not exclusive, and fair use cases are decided by applying an “equitable rule of reason” analysis. Sony, 464 U.S. at 448. Indeed, other courts have based their decisions regarding fair use on a variety of factors not enumerated in the statute. E.g., Williams & Wilkins, 487 F.2d at 1354-57 (considering whether the use is a significant factor in facilitating the purpose for which it was reproduced, and whether the use has been considered historically to be noninfringing). Defendants have introduced evidence in support of the following additional factors:

1.The publishers’ do not conform their policies to the Copyright Act, and routinely violate it.

Plaintiffs do not conform their policies to copyright law. The persons in charge of plaintiffs’ permissions departments are completely unfamiliar with copyright law and consider the law irrelevant to the publishers’ permission policies.[ FN 20 ] They have reproduced and distributed copies of Mr. Smith’s “White Paper” without his permission and without payment of any fee. (R.54, Decl. Smith ¶42). Plaintiffs’ works contain deliberately illegal copyright warnings which threaten prospective fair users with dire consequences if any use of plaintiffs’ works are made without permission. E.g. copyright pages from Roger Brown, Social Psychology: The Second Edition (1986) and James S. Olson & Randy Roberts, Where the Domino Fell (1991) (R.61 Ex.L). Permission department employees are directed not to inform customers who request permission to use a small amount of material that permission is not needed, even when it would qualify as fair use under the publishers’ own egregious standards. (R.61 Ex.K, Fisher Dep. at 81; Ex.J, sample permission responses). Particularly illegal is their practice of asserting ongoing rights in works in which they no longer own copyright (because those works are in the public domain) and charging a fee for “permission” to photocopy excerpts of such works. (R.61 Ex.K, Fisher Dep. at PP.25-26, 86 87).

2.Plaintiffs’ unfair tactics against Smith.

Mr. Smith and MDS have been singled out by these plaintiffs because of the “White Paper” written by Mr. Smith that shows the illegality of the publishers’ copyright position. In the Chronicle of Higher Education the plaintiffs’ trade representative called Mr. Smith a “looter” — someone who steals the property of another through violence. (R.47, Smith Dep. at P.463). Plaintiffs have refused to respond to, or to timely respond to, MDS’s permission requests, and have attached unreasonable conditions to a grant of permission. (Id. at PP.466-467).

3.The publishers use the copyrights acquired from authors in a manner inconsistent with copyright, in a manner that is a disincentive for authors to create new works, and in a manner that is injuring education.

The views of authors are critical in deciding a fair use case, Harper & Row, 471 U.S. at 549-550, because authors, and not publishers, are the creators of original works. Here, authors support MDS’s activities. They desire to have their views disseminated and discussed at the college level. Roger Brown, author of one of the works at issue, believes that the use made of his work was a fair use, and he is dismayed that Macmillan has brought this suit. (R.61 Ex.A, Decl. Brown ¶3). He believes Macmillan is using his original copyright in a manner contrary to the purpose of the copyright laws. He and at least 160 authors view the position of the publishers as harmful to education (R.69 Ex.B, R.62 Ex.B) as a disincentive to create more works of scholarship. (E.g., R.61 Ex.A, Decl. Lieberman ¶8). Most professors are authors. They want their works to be used by their colleagues in coursepacks when their colleagues deem it appropriate, and they object to barriers to such use. (R.69 Ex.B, Decl. of 51 Instructors/Professors; R.61 Ex.A, Decl. Kinder, ¶6-7, Dawson ¶7-8, Lieberman ¶8, Lofland ¶4, Brown ¶¶5-6).

The publishers’ permission system is impairing access to educational materials. It has resulted in university libraries being unwilling to accept the deposit of professors’ academic materials for use in reserve reading, and the institutionalization of certain aspects of classism and racism because the publishers’ procedures disadvantage those students who work, commute, have families to care for, have limited funds, or who attend educational institutions with limited funding for libraries. (R.61 Ex.A, Decl. Lofland ¶5-6). The public suffers when professors are unable to present and discuss the course materials they believe are most appropriate for a given class at a given time, (R.61 Ex.A, Decl. Wellman ¶2, Moll ¶4, Warner ¶3), and when nursing students cease providing pro bono health services to Alzheimers’ support groups because they spend fifteen hours per class per semester doing their own photocopying. (R.70, Decl. Liken ¶7). Education has been and is being injured when coursepacks become less available, or unavailable, or when the price doubles or triples. (R.61 Ex.A, Decl. Dawson ¶6, Kinder ¶5, Lieberman ¶7, Brown ¶5, Liken ¶10, Squier ¶11).

Adhering to the system created by the publishers undermines the ability of professors to use portions of works so as to criticize those works and results in increasingly greater amounts of control by publishers over the content of educational materials. Professors are already forced to buy from a limited market of appropriate books, and publishers already control the content of a work, the price of the work, the marketing channels, the promotional efforts, whether the work is updated, and whether it is in or out of print. (R.61 Ex.A, Decl. Lofland ¶¶2, 7). Education is harmed when professors summarize for the students what an excerpt means instead of having the students read it and reach their own conclusions. (R.61 Ex.A, Decl. Warner ¶9).

4.Coursepacks have been fair use throughout the United States for twenty years.

There are 4,700 members of the National Association of Quick Printers (“NAQP”), many of whom have been involved in the preparation of coursepacks over the past twenty years. A Director of the NAQP stated that NAQP members have always believed that coursepack preparation was fair use because of the widespread nature of the business, the express terms of §107, and the absence of any objection from the publishers. (R.54 Decl. Ternes ¶¶4-5).[ FN 21 ] MDS’s activities have been consistent with the activities of the coursepack industry throughout the U.S. (Id. at ¶15).

The facts in the record conclusively show that the use of the excerpts by the students and professors is a fair use of the copyrighted works, and that MDS’s provision of printing services as a means by which the professors and students access those works, are included in the sphere of fair use. This determination of fair use is narrowly confined to circumstances where educators who would not have assigned a copyrighted work for their students select limited portions of excerpts of works for use by a limited number of people and not for distribution to the public, (i.e., the students enrolled in one particular course, see, National Rifle Ass’n of America, 15 F.3d at 562), and where the printer does not select the excerpts or the amount to be copied and does not base copying charges on the nature or content of the work copied.

This is not a case in which the defendants contend that a use is fair merely because it involves an educational setting, or because the users of the work are professors and students. Indeed, as his testimony proves, Mr. Smith recognizes limits on the amount of a work that MDS may reproduce even at the request of educators and students. He recognizes that as a work moves closer to fantasy on the fact/fantasy continuum, the professor and student may be entitled to copy less of the work. He is aware of the particular concerns over fair use of unpublished works. He also recognizes the significance of works being out of print or unavailable, the public domain, the setting in which the work is to be used, and the “non-public” characteristics of the student user. (R.54 Decl. Smith ¶¶8, 14-15, 20). This is an appropriate case in which to hold that the use of these excerpts by the students and professors was fair, and that defendants’ activities were permissible as a part of those fair use activities.

III.THE COURT MUST REVERSE THE AWARD OF SUMMARY JUDGMENT IN FAVOR OF PLAINTIFFS AND SHOULD GRANT SUMMARY JUDGMENT FOR DEFENDANTS.

Based on the record in this case and on the law, the Court of Appeals must reverse the award of summary judgment in favor of the plaintiffs, and the Court of Appeals should grant summary disposition for the defendants on the issue of fair use.

A.The Court of Appeals must reverse the award of summary judgment in favor of plaintiffs.

In response to plaintiffs’ motion for summary judgment, defendants submitted hundreds of declarations from authors, copyright holders, professors, students, attorneys, scholars, a coursepack industry expert, and from Mr. Smith himself which established that plaintiffs should not have been granted summary judgment. If the Court does not conclude as a matter of law that the relevant facts require a finding of fair use in favor of defendants, the evidence certainly demonstrates the existence of genuine issues of material fact which preclude summary judgment in favor of plaintiffs.

As this brief demonstrates, defendants have established the existence of such issues as to each of the four enumerated factors of §107, as to various unenumerated factors, as to willfulness, and as to defendants’ defenses other than fair use. The District Court disregarded those issues of fact and, instead, applying its own biases, picked, chose, and weighed the facts to reach the results it wanted. That procedure is inconsistent with Rule 56 and requires reversal of the summary judgment awarded to plaintiffs.[ FN 22 ]

B.The Court of Appeals should grant summary judgment for defendants.

1. Fair Use.

Defendants have submitted a substantial factual record demonstrating that the use of the excerpts at issue is well within the scope of §107, the purposes of the U.S. Constitution, and framework of relevant Supreme Court decisions. Summary judgment may be rendered in favor of the nonmoving party even if no formal cross-motion is made. Sprinklets Water Center, Inc. v. McKesson Corporation, 806 F.Supp. 656, 658 (E.D. Mich. 1992), 10A Wright & Miller, Federal Practice and Procedure §2720 (1983). The uncontested facts and law discussed above establish that defendants’ activities are fair use, and this Court should enter judgment accordingly.

2. Due Process.

Section §107 expressly authorizes the reproduction of multiple copies of a copyrighted work for purposes such as teaching. The plain language of §107 gives no notice that it is illegal for professors to authorize defendants to reproduce multiple copies of excerpts of works for purposes such as teaching. There is no legislative or administrative guidance, or authoritative judicial decision, that instructs that such reproduction in copies is illegal. If, as plaintiffs argue, §107 does not mean what it says due to the rights granted authors in §106, then that section of the Copyright Act is unconstitutionally vague and, therefore, void.

The Fifth Amendment of the Constitution requires that all laws give reasonable notice of the behavior proscribed and requires that statutes provide sufficiently definite standards to protect against arbitrary enforcement that chills protected speech:

“It is a basic principle of due process that an enactment is void for vagueness if its prohibitions are not clearly defined. Vague laws offend several important values. First, because we assume that man is free to steer between lawful and unlawful conduct, we insist that laws give the person of ordinary intelligence a reasonable opportunity to know what is prohibited, so that he may act accordingly. Vague laws may trap the innocent by not providing fair warning. Second, if arbitrary and discriminatory enforcement is to be prevented, laws must provide explicit standards for those who apply them. . . . Third, but related, where a vague statute abuts upon sensitive areas of basic First Amendment freedoms, it operates to inhibit the exercise of those freedoms. Uncertain meanings inevitably lead citizens to steer far wider of the unlawful zone than if the boundaries of the forbidden areas were clearly marked.” Grayned v. City of Rockford, 408 U.S. 104, 108-109, 92 S.Ct. 2294, 2298-2299 (1972) (footnotes and internal quotations omitted).

These due process requirements apply to all laws, including civil statutes, A.B. Small Co. v. American Sugar Refining Co., 267 U.S. 233, 239 (1925), and require that §106 and §107 of the Copyright Act be given the highest level of scrutiny because of the criminal penalties in the statute (17 U.S.C. §506, see, e.g., Boddie v. American Broadcasting Co., 881 F.2d 267, 270 & n.2 (6th Cir. 1989), cert. denied, 493 U.S. 1028, 99 S.Ct. 675 (1990)), and the punitive fines in the form of enhanced statutory damages (17 U.S.C. §504(c)), and because judicial implementation of the publishers’ view “threatens to inhibit the exercise of constitutionally protected rights.” Colautti v. Franklin, 439 U.S. 379, 391 (1979); Rust v. Sullivan, 500 U.S. 173, 111 S. Ct. 1759, 1776 (1991) (university is a traditional sphere of free expression fundamental to the functioning of society).

Courts and commentators have long recognized that fair use and the four factors are nearly indeterminate. See also, e.g., Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171, 1174 (5th Cir. 1980) (“The question of fair use has been appropriately described as `the most troublesome in the whole law of copyright.’”) (quoting Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 (2d Cir. 1939)).[ FN 23 ] Indeed, the net effect of the four factors can be confusion, not clarity, as aptly summarized by Judge Leval:

“These formulations . . . furnish little guidance on how to recognize fair use. The statute, for example, directs us to examine the ‘purpose and character’ of the secondary use as well as ‘the nature of the copyrighted work.’ Beyond stating a preference for the critical, educational, and nonprofit over the commercial, the statute tells little about what to look for in the ‘purpose and character’ of the secondary use. It gives no clues at all regarding the significance of ‘the nature of’ the copyrighted work. Although it instructs us to be concerned with the quantity and importance of the materials taken and with the effect of the use on the potential for copyright profits, it provides no guidance for distinguishing between acceptable and excessive levels. Finally, although leaving open the possibility that other factors may bear on the question, the statute identifies none.” Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1105-06 (1990).

Additionally, nothing in the statute provides any guidance on how each of the factors should be weighed against the others or weighed “together in light of the purposes of copyright.”

However, the construction urged by plaintiffs goes beyond the usual confusion regarding fair use and reaches the realm of caprice.

If the Court of Appeals were to conclude that §107 does not permit MDS to provide printing services on behalf of professors and students, then §107, which “arguably seems to permit” MDS’s activities (R.87, R&R of Magistrate at P.24), must be unconstitutionally vague and the Court of Appeals must enter summary judgment in favor of defendants. See Defendants’ Motion to Dismiss Plaintiffs’ Complaint, or for Summary Judgment, on Grounds of Vagueness, their Brief in Support, and their Reply Brief (R.53, 68).

IV.DEFENDANTS ARE ENTITLED TO A JURY TRIAL ON THEIR DEFENSES.

The District Court entered judgment in favor of plaintiffs without ruling on (or, apparently, considering) defendants’ affirmative defenses other than fair use. That omission alone requires reversal. Moreover, the District Court could not have granted plaintiffs’ summary judgment on those defenses.

Plaintiffs’ motion and brief contained only a general assertion, unsupported by law or any reference to the record, that “there are no facts” to support defendants’ other defenses. Plaintiffs did not state how those defenses were deficient or what elements thereof lacked proof. Such a sweeping and conclusory statement fails to meet the movants’ initial burden of informing the District Court of the basis for its motion, and identifying those portions of the ‘pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 329, 323, 106 S.Ct. 2548, 2553 (1985), see also, id. at 328 (White, J. concurring) (insufficient for movant to support motion for summary disposition “with a conclusory assertion that the [nonmovant] has no evidence to prove his case”).

Moreover, the facts discussed in this brief would have prevented the District Court from finding for the plaintiffs as a matter of law as to defendants other affirmative defenses:

(1) Laches. A copyright action may be dismissed where the plaintiff has unreasonably delayed in filing its suit and the defendant has been materially prejudiced by the delay. Boothroyd Dewhurst, Inc. v. Poli, 783 F.Supp. 670 (D. Mass 1991). Coursepacks have been used throughout this county for nearly twenty years. Coursepacks have become a staple in the teaching profession. Mr. Smith set up his business to provide printing services to those users relying on the publishing industry’s inaction in allowing the coursepacks industry to develop.

(2) Unclean Hands. Unclean hands is a defense to an otherwise valid claim of copyright infringement if the copyright claimant has acted so improperly as to make punishment of the claimant outweigh the need to provide relief to the claimant. Vogue Ring Creations, Inc. v. Hardman, 410 F.Supp 609, 615-616 and n.1 (D.R.I. 1976) (misleading copyright notice); Broadcast Music, Inc. v. Hearst/ABC Viacom Ent. Services, 746 F.Supp. 320, 329 (S.D.N.Y. 1990) (refusal to offer a reasonable copyright license).

Here, defendants have submitted evidence of the publishers’ lack of good faith, inequitable use of copyright power, campaigns of copyright disinformation, demands for fees to which they are not entitled, refusals to respond to permission requests, unequal treatment of requestors, and other inequitable conduct.

(3) Copyright Misuse. Copyright misuse exists when copyright holders use their copyrights in a manner not intended by the Copyright Act and contrary to the public interest, or when they seek to extend their copyrights to cover material not included in the scope of copyright. Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990) (misuse of copyright bars a plaintiff from prevailing in an action for infringement); accord United States v. Loew’s Inc., 371 U.S. 38, 83 S.Ct. 97 (1962) (copyright misuse recognized by act of remanding for consideration of defense), M. Witmark & Sons v. Jensen, 80 F. Supp 843 (D.Minn. 1948) app. dismissed, 177 F.2d 515 (8th Cir. 1949) (negotiating practice constituted misuse of copyright monopoly); see also, Rosemont Enter., Inc. v. Random House, Inc., 366 F.2d. 303, 311 (2d Cir. 1966) (J. Hays, concurring) (infringement relief should be denied because conduct of the copyright holder was frustrating the copyright purpose of dissemination of information) cert. denied, 385 U.S. 1009, 87 S.Ct. 714 (1967).

Here, defendants have come forward with evidence (See Section II.E supra) of defendants’ attempt to include within the scope of copyright those uses that are reserved by Congress to the public domain, to prevent access to uncopyrightable information and ideas, to impose an unlawful tax upon students and use the copyshops to collect it, and to compete unfairly with copyshops by assessing fines and filing lawsuits if they do not pay the publishers whatever the publishers demand.

(4) First Amendment. The First Amendment to the Constitution is a limitation upon the power of Congress to regulate the exercise of speech. The Supreme Court has recognized the First Amendment values inherent in the Copyright Act, see generally, Harper & Row, 471 U.S. 539, and courts attempt to construe the Copyright Act so as to avoid finding the copyrights of authors inconsistent with the First Amendment. Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 445 F.Supp. 875 (S.D. Fla. 1978), aff’d on other grounds, 626 F.2d 1171 (5th Cir. 1980). If the Court of Appeals construes the Copyright Act in the manner requested by publishers, that construction will violate the First Amendment because it turns the Copyright Act into a vehicle of absolute censorship by copyright holders, and thus unlawfully impinges upon the rights of students and professors to access and disseminate information, and unlawfully impinges upon defendants’ independent First Amendment rights to print those excerpts for the students and professors. Metromedia, Inc. v. City of San Diego, 453 U.S. at 503-505 & n.11.

V.AS A MATTER OF LAW, DEFENDANTS CANNOT BE WILLFUL EVEN IF THEY ARE FOUND TO BE INFRINGERS.

Section 504(c)(2) of the Copyright Act permits a court to enhance statutory damages if a plaintiff proves defendants’ infringement was “willful.” Both the Magistrate and the District Court adopted Professor Nimmer’s interpretation of willful:

“It seems clear that as here used ‘willfully’ means with knowledge that the defendant’s conduct constitutes copyright infringement.” 3 Nimmer on Copyrights, §14.04[B][3] (1992).

See RCA/Ariola Int’l, Inc. v. Thomas & Graystone Co., 845 F.2d 773, 779 (8th Cir. 1988); cf. Eltra Corp. v. Basic, Inc., 599 F.2d 745, 757 (6th Cir.), cert. denied, 444 U.S. 942 (1979), (no willful patent infringement if defendant has an honest doubt about the validity of the patent).

The uncontradicted record establishes that defendants’ beliefs were actual, held in good faith and, most importantly, correct: the Magistrate held that defendants were entitled to summary judgment on willfulness because of defendant Smith’s unprecedented efforts to educate himself about copyright law in general and fair use in particular, and based on the indisputable fact that: “the statute does not expressly prohibit (and, arguably, seems to permit) his activities….” (R.87 R&R of Magistrate at P.24). Contrary to summary judgment standards or the fact that the statute “seems to permit” the defendants’ activities, the District Court weighed the evidence and concluded that Mr. Smith:

“could not reasonably have reached the conclusion that his activities were safe or lawful, or that Kinko’s was wrongfully decided. The defendants continued to infringe the copyrighted works, knowing full well that they were at risk of being declared copyright infringers.” (R.100 Order at P.14).[ FN 24 ]

The District Court apparently held that Mr. Smith was “willful” because he had the intelligence to question the Kinko’s ruling, a ruling that is “wrongly decided . . . poorly reasoned and . . . filled with error . . . .”, (R.61 Ex.A, Decl. Patterson ¶8), and because he knew he might be sued by litigious publishers.

Defendants have been held not to have been willful on investigations much less exhaustive than that conducted by Mr. Smith, E.g., Hickory Grove Music v. Andrews, 749 F.Supp. 1031, 1040 (one trip to public library) amended, 1990 U.S. Dist. LEXIS 19389 (Sept. 13, 1990). Other decisions hold that good faith reliance on advice of counsel prevents a finding of willfulness. E.g., RCA/Ariola Int’l, Inc., 845 F.2d at 779.

The District Court’s ruling is unprecedented in copyright law: defendant Smith has proven how seriously he took the rights of authors, copyright owners, and the public; how carefully he considered the application of the law to his circumstances; and how reasonable his actions were in light of the facts and the law. If Mr. Smith is, nevertheless, found to be a willful infringer, then no citizen, faced with an issue on which the Supreme Court or a Court of Appeals has not yet ruled directly, can avoid being branded a willful infringer merely for being wrong.

This Court should adopt the conclusion of the Magistrate that, as a matter of law, defendants were not willful infringers.

VI.THE DISTRICT COURT’S INJUNCTION IS UNCONSTITUTIONAL.

The District Court issued an injunction prohibiting defendants from any copying of any works, including those not yet in existence, in which these plaintiffs own copyright. Such an injunction, “unprecedented in copyright law,” Sony, 464 U.S. at 444, violates Feist because it enjoins copying from works that may contain uncopyrightable portions; violates the Copyright Clause of the Constitution and the Copyright Act because it does not require that a work be a work of “original authorship” or that it be registered with the U.S. Copyright Office before it is protected, 17 U.S.C. §§102, 412; and violates Supreme Court requirements set forth in Sony and Acuff-Rose because it fails to apply a case-by case determination as to fair use and fails to apply the required “equitable rule of reason.” Moreover, the injunction violates general jurisprudential requirements because it adjudicates before a case or controversy arises. It violates defendants’ rights of due process because it decides facts and law not yet presented to the Court. Finally, and most importantly, it violates the First Amendment because it is a prior restraint. The District Court’s injunction demonstrates well the unfortunate lack of care that permeated the District Court’s review of the facts and application of law.

CONCLUSION

This Court can draw only three conclusions from the law and the facts in the record. First, defendants are entitled to summary judgment on fair use as a matter of law. In the alternative, plaintiffs’ motion for summary judgment must be denied, the District Court’s Order must be reversed, and the case remanded to the District Court for a jury trial. Second, that defendants cannot be willful infringers, and the District Court’s Order must be reversed. Third, if §106 and §107 do not mean what they plainly state, then the Copyright Act is unconstitutionally vague, and the District Court’s Order must be reversed.

Respectfully submitted,
BODMAN, LONGLEY & DAHLING

By:________________________________
Susan M. Kornfield (P41071)
David G. Chardavoyne (P27034)
Louise-Annette Marcotty (P44657)
Lydia Pallas Loren (P47644)
Attorneys for Defendants-Appellants
110 Miller, Suite 300
Ann Arbor, Michigan 48104
(313) 761-3780
October 13, 1994


Footnotes

Footnote 1 Professor Dawson’s coursepack is one of the three coursepacks over which MDS is being sued, because one of the twenty-nine excerpts was from “Farewell to the Party of Lincoln: Black Politics in the Age of FDR,” by Nancy Weiss. The other two coursepacks at issue were for Professor Kinder’s course “American Political Processes: Public Opinion and Democratic Ideals,” and Professor Lieberman’s course “History of Vietnam Era.”

Footnote 2 Ms. Liken’s declaration was originally submitted unsigned due to inclement weather on the day of filing. Her signed declaration was later submitted. (R.70).

Footnote 3 Mr. Smith read the Kinko’s decision numerous times; he secured a pass to, and spent hundreds of hours in, the University of Michigan Law Library reading cases, treatises, and law review articles on copyright and fair use. He read the sources cited in the Kinko’s decision and purchased a copy of all copyright cases decided in 1989 and 1990 published by Commerce Clearing House, from which he read several hundred cases. He discussed copyright and fair use with academic and commercial copyshop owners, authors, professors, lawyers (copyright experts and nonexperts), professors who used coursepacks, students, copyright scholars, and coursepack preparers. He obtained and reviewed the Kinko’s trial transcript. (R.54 Decl. Smith 12-17,27).

Footnote 4 Mr. Smith is in very good company. See brief of amici curiae copyright scholars.

Footnote 5 While Mr. Smith has always believed that the use of excerpts for coursepacks is fair use, he did not wish to be sued. Therefore, seeking a compromise solution, he began submitting to copyright holders a penny per page of material reproduced (that is, 20% of his gross photocopy revenues). (R.54 Decl. Smith 41). This effort further evidences Mr. Smith’s good faith in seeking to resolve this issue of coursepacks in education reasonably without the risk of litigation. See Acuff-Rose, 114 S.Ct. at 1174-1175 n.18.

Footnote 6 Notwithstanding rejection at the highest level of the federal judiciary, the publishers continue to advocate their argument of copyright as a private property interest. The opinion of the District Court in the present case is an excellent example of what happens when a court loses its focus on the true nature of copyright and adopts the “copyright-as-property” view: “The defendant is taking the property of another without right or permission, using that property for personal gain. There is simply no excuse for the conduct.” (R.100 Order at P.5).

Footnote 7 These uses further the constitutional policy of the promotion of learning and the First Amendment values of speech, education, and access to information. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 105 S.Ct. 221 (1985).

Footnote 8 Section 106 states: “Subject to Sections 107 through 120, the owner of copyright . . . has the exclusive rights to do and to authorize any of the following . . . .”

Footnote 9 The Supreme Court, having concluded that parody is in the public interest, would surely conclude that the dissemination of information to students also is in the public interest.

Footnote 10 Where the use of the work fits within the enumerated fair uses, the analysis of the first fair use factor must favor defendants. New Era Publications Int’l v. Carol Publishing Group, 904 F.2d 152, 156 (2d Cir.) (“[i]f a book falls into one of these categories . . . assessment of the first fair use factor should be at an end”), cert. denied, 498 U.S. 921, 111 S. Ct. 297 (1990).

Footnote 11 If providing access to television programming is in the public interest, access to educational and scholarly materials surely qualifies for similar status.

Footnote 12 The District Court confused MDS’s status as a Michigan for-profit company with the issue of whether the use of the work was commercial. Even if a court somehow concluded that printing an excerpt is equivalent to using an excerpt, the Supreme Court has laid to rest the reliance on “commercial use” as anything more than one aspect of the first statutory factor, because: “If, indeed, commerciality carried presumptive force against a finding of fairness, the presumption would swallow nearly all of the illustrative uses listed in the preamble paragraph of 107, including news reporting, comment, criticism, teaching, scholarship, and research, since these activities ‘are generally conducted for profit in this country.’ Congress could not have intended such a rule, which certainly is not inferable from the common-law cases . . . .” Acuff-Rose, 114 S.Ct. at 1174 (citation omitted).

Footnote 13 This “obvious exception” was not so obvious to the District Court, which found against defendants in part because defendants did not make a “transformative use” of plaintiffs’ works. (R.100 Order p.8).

Footnote 14 The publishers and the District Court confuse the standard for copyrightability set out in Feist (i.e., “original authorship”) with the second factor, “nature of the work.” Merely because a work contains original authorship does not mean that the second factor is in favor of the copyright holder, or else that inquiry would have no meaning, since a work containing no copyrightable authorship can be used freely by anyone. Feist. The inquiry into this factor, then, must go beyond whether the work contains copyrightable authorship to whether the work is primarily factual and historical, or whether it is a work of fiction and fantasy. Acuff-Rose, 114 S.Ct. at 1171.

Footnote 15 One student testified that he has seen one work excerpted four different ways for four different classes. (R.61 Ex.A, Decl. Wellman 8).

Footnote 16 No copyright protection arises solely on the basis that a scholarly work takes time to research, analyze and draft. As noted in .c1.Feist;Feist, the “sweat of the brow” analysis has been rejected as an unconstitutional basis for a grant of copyright.

Footnote 17 This case does not involve the question of the market for derivative works as in Acuff-Rose, 114 S.Ct. at 1178-1179, because the excerpts are “straight reproduction of multiple copies for classroom distribution,” id. at 1171 n.11, and contain no new authorship. 17 U.S.C. 101.

Footnote 18 As the Supreme Court noted when it declined to declare home videotaping to be infringing, “[t]he judiciary’s reluctance to expand the protections afforded by the copyright without explicit legislative guidance is a recurring theme.” Sony, 464 U.S. at 431. The District Court’s ruling does precisely what the Supreme Court said the courts cannot do — expand the rights of publishers to include those uses expressly reserved by Congress as outside the scope of the copyright owner’s exclusive rights. This judicial activism usurps the role of the Congress in defining the rights of authors.

Footnote 19 The “permission” system established by the publishers is irrelevant to a determination of fair use. See Acuff-Rose, 114 S.Ct. at 1173-1174 & n.18. (“If the use is otherwise fair, then no permission need be sought or granted.”) The District Court erred in finding the publishers’ permission system relevant at all, as a matter of law, and erred, as a matter of fact, when it found the system “clear and relatively simple.” (R.100 Order at P.4). Defendants submitted hundreds of affidavits showing that the publishers’ system is a disaster system: requests are ignored and not responded to in a timely manner, fees assessed are unreasonable and unrelated to the number of copies made, persons requesting permission are treated unequally, permission for the same work must be repeatedly requested semester after semester, and unreasonable and unnecessary conditions are attached to the granting of permission. (R.54 Decl. Ternes 8, R.61 Ex.A and Ex.P). The scheme has driven companies out of business (R.54 Decl. Ternes 7-11), and even Kinko’s — the company most likely to have the economies of scale necessary to comply with even an unreasonable system — has announced it is no longer going to produce coursepacks. (Hearing TR 42). Thus, at a minimum, a material issue of fact exists as to the workability of publishers’ licensing scheme.

Footnote 20 The publishers’ permissions staff testified that Section 107 of the Copyright Act was not relevant to permission policy. Decisions on permissions are based entirely on “policy rather than on . . . the law.” (R.61 Ex.K Fisher Dep. at PP.37-38, 54, 59, 94; Ex.H van Rheinberg Dep. at PP.15-17, 59, 92, 128; Ex.G Williams Dep. at PP.31, 67-70).

Footnote 21 Coursepack preparers investigated the soundness (or lack thereof) of the Kinko’s decision and concluded that the Kinko’s opinion was illogical, contradictory, wrong, and unworkable, and that 107 (if it meant what the Kinko’s judge said it meant) was vague and unfair. (R.54 Decl. Ternes 6).

Footnote 22 Plaintiffs have not even met the fundamental burden of showing that they own copyrights in all of the works at issue. The copyright renewal certificate to Public Opinion is registered to Walter Lippman (the author) (R.8 Decl. Goldstein Ex.B), and the work itself indicates that Lippman is the copyright owner (R.8 Decl. Rauchberg Ex.B); a database of the records of the U.S. copyright office reveals a copyright registration to Political Ideology: Why the Common Man Believes What He Does in the name of Robert Lane (the author) (R.43 Ex.12 at P.14) and the renewal certificate provided to defendants by plaintiffs shows Lane as the copyright owner; and a database of the records of the U.S. copyright office reveals two copyright registrations for Where the Domino Fell: America and Vietnam, 1945 – 1990, one in the name of St. Martin’s Press and a more recent registration in the name of Olson & Roberts (the authors) (R.43 Ex.12 at P.16).

Footnote 23 Numerous other courts have agreed: see, e.g., Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1255 (2d Cir.), cert. denied, 481 U.S. 1059, 107 S.Ct. 2201 (1986); MCA, Inc. v. Wilson, 677 F.2d 180, 182 (2d Cir. 1981) (“When weighing the merits of a defense such as this, a court does not have the benefit of either a statutory or judicial definition of what is reasonable and fair.”).

Footnote 24 In holding against defendants, the District Court disregarded the limitations on fact-finding for purposes of summary judgment, and accepted the assertion that the publishers have the only plausible view of copyright law. In so doing, the District Court ignored the testimony of those who agreed with Mr. Smith — namely, Professor L. Ray Patterson, one of the country’s leading copyright scholars (whose analysis was relied upon by the Supreme Court six times in Feist), attorneys, an expert in the coursepack industry, over five hundred authors, professors, and students — and Supreme Court decisions on fair use.