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 publishers "use" 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. |
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of the Leland Stanford Junior University. With the exception of the Nolo Copyright and Fair Use Overview, this work is
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