Re: Fair use / fair dealing - a fantasy?

["Copycense (K. Matthew Dames)" <copycense@gmail.com>]

This is quite the interesting thread, and echoes a conversation I
had recently with my copyright class at Syracuse University. I
wanted to help clarify the preemption issue and the fair use=
issue.

1. Preemption

I've researched and written about the contract vs. copyright
issue quite a bit, particularly as it applies to the limitations
that most often apply to information professionals (Sections 110,
109, 108, and 107). The issue concerns state vs. federal law
preemption, an issue that simultaneously cuts across the
Supremacy Clause in Article VI of the U.S. Constitution, Section
301 of the Copyright Act of 1976, and a raft of cases beginning
with Judge Easterbrook's 1996 opinion in ProCD v. Zeidenberg.

The preemption issue arises when authors' or users' copyright
rights appear to be either enlarged or reduced by contract (such
as in the instant example of a publisher's contract to publish a
journal article). To the general question whether contracts may
deal with copyrighted material, the answer is obviously yes. The
preemption challenges are more likely to relate to the attempted
contractual extension of copyright rights beyond those granted by
the Copyright Act, or the reduction of the rights that users have
traditionally enjoyed apart from contract. Most cases conclude
that as long as the terms of the contract (written under state
law) do not occupy the same area as that reserved to copyright
law (federal law), then the terms of the contract under state law
will be valid and binding.

Therefore, my understanding of the issue echoes that made by a
prior contributor to this thread: the general rule is that once a
contract is in place, the terms and conditions of the contract
prevail over federal copyright law because a contract is
considered to be a private bargain between private actors (whom
are presumed to have equal bargaining power to negotiate the
terms and conditions of the contract). I am assuming, of course,
that the contract is valid under applicable state law.

The ProCD case (7th Circuit) is cited to often as the prevailing
doctrine in this area, but my notes indicate that the Third and
Fifth Circuits hold differently. Typically, this is the sort of
split that begs for a Supreme Court ruling. I suppose that case
is coming soon to a theater near you.

If we use ProCD as the prevailing doctrine, then one could
question whether *any* copyright exceptions (Sections 110, 109,
108, and 107) are preserved in an information landscape awash
with digital information. I think we all can reasonably agree
that the contract is the dominant legal construct that governs
access to and use of digital information. If the ProCD doctrine
is the prevailing doctrine, then it seems to me that the only way
to preserve any copyright exceptions -- including fair use under
Section 107 -- is to negotiate those exceptions back into the
terms and conditions of the contract.

As that applies to the publishing example mentioned in this
thread, this means that an author would have to negotiate each
and every exception (or parts thereof) back into a final journal
publication contract. Otherwise, there is no guarantee that the
author will be able to make use of any of those exceptions;
unless specifically negotiated into the publishing contract, we
must presume that all of the exceptions under the Copyright Act
-- including fair use -- are off the table.

This points to the critical importance of contracts in an
environment governed by digital information. This also points to
the importance of knowing copyright law even within the realm of
license or contract negotiation, since you cannot negotiate back
into a contract what you do not realize is available under
federal copyright law. So, to the extent that one must negotiate
a fair use exception back into a state law contract even though
it exists as a federal law exception, once could say that fair
use (as are most other exceptions) is a fantasy today.

But even if you know how the game is played, having the leverage
to get a publisher to change its contract terms and conditions is
a different story altogether.

2. Fair Use

As for the sole issue of fair use, all the commentators I've read
or spoken to -- David Nimmer, Bill Patry, and Jessica Litman
among them -- conclude that fair use under Section 107 is an
affirmative defense to copyright infringement. Fair use is *not*
a right. In a typical copyright infringement lawsuit, a copyright
owner needs to prove (and plead) the following:

- The owner owns the copyright;
- Defendant violated one or more of the copyright owner's exclusive rights (Sections 
106, 106A); and
- Defendant has no defense or excuse (limitation of exclusive rights) in Sections 
107-122.

In order to clarify this issue for myself, I posed the following
hypothetical to Patry earlier this month because I wanted to make
sure I had taught my class correctly (especially pursuant to
Federal Rules of Civil Procedure 8 and 11). (Please forgive
misspellings from both of us.)

> Let's say that Party A (copyright owner) files an infringement
> lawsuit against Party B, and A sues B to stop B's acts of
> reproducing and publicly displaying A's content. B is going to
> claim fair use as a defense. For procedural purposes, does B
> have to claim the fair use defense against both of A's claims
> the reproduction and public display claim, or does the fair use
> defense serves as a defense to both of A's exclusive right
> claims?
>
> In other words, is it procedurally possible that B could claim
> a fair use defense on the reproduction claim and win, but claim
> a fair use defense on the public display claim and lose?
>
> Does the answer change depending upon how A pleads its
> complaint?
>
> Any clarification (or source referral) is appreciated.

Patry's response follows:

> Hi Kevin. Most complaints that I have seen have different
> counts for violation of the reproduction and display right, but
> as an affirmative defense, fair use is pled generaly - that is
> not on a count by count basis. Depending on the facts, it is
> possible for fair uise to apply on one but not the other,
> something Google faces in many suits. I look forward to the
> interview. Bill

In a 2005 blog post, Patry cites Harper Row v. Nation, 471 U.S.
539 (1985), as authority for the premise that fair use is an
affirmative defense, and not a right. URL:
http://williampatry.blogspot.com/2005/10/what-are-affirmative-defenses.html

So here's the practical problem with fair use being an
affirmative defense. Since fair use is an affirmative defense,
any party seeking to use fair use as an affirmative defense has
to plead that pursuant to FRCP 8(c) in response to a plaintiff's
complaint. This necessarily means that if you are that party, you
are under the jurisdiction of federal court as party to an
infringement lawsuit.

I presume that most of us on this listserv would rather not be a
defendant in a copyright infringement lawsuit, even for the
purpose of pleading a fair use defense pursuant to FRCP 8(c). To
close the loop, this gets us back to the initial question posed
by this thread: is fair use a fantasy? If fair use is rendered
irrelevant by contract, and can be used only as a pled defense
within the scope of a copyright infringement lawsuit (and we
don't want to be in a lawsuit to begin with), then what utility
does it have?

I teach my class to use fair use (and the other information
professional exceptions codified in Sections 110, 109, and 108)
as a form of business risk analysis to decide the extent to which
they may use, access, or invoke one or more of the owner's
Section 106 rights without paying a fee and without asking
permission.

But as a statute applied within a digital information environment
governed by contracts, I'd conclude that fair use provides little
legal protection for readers, users, or information
professionals. I believe the explicit preservation of fair use
rights within the digital/contractual environment is is an issue
worth lobbying for.

I apologize for the length, but I hope this helped clarify some issues.

K. Matthew Dames

_________________________
K. Matthew Dames
Executive Editor
Copycense: Code & Content
Online: www.copycense.com


On Jun 9, 2007, at 5:42, Peggy Hoon wrote:

> I am a lawyer.  There are a number of elements that must be met
> before a contract is enforceable.  Certainly if an individual
> understands that they are signing away all the rights I
> previously enumerated, the contract would likely be
> enforceable. I should also add that I do agree with Mr.
> Thatcher that fair use is a right, and not a defense.

Peggy Hoon
NC State University


> On Jun 7, 2007, at 4:34 PM, Paul N. Courant wrote:
>> I'm not a lawyer, but my understanding is that contracts trump
>> law.  There are certain rights you can't sign away by contract
> -
>> you can't sell yourself into slavery, for example - but you
>> can certainly sign away your rights to many things that would
>> otherwise be lawful if you had not signed a contract. Fair use
>> claims are plausibly on the list.  Thus, I think that Sandy is
>> exactly right on this point.
>>
>> I also note that the fact that something is ludicrous is
>> hardly a proof that it doesn't exist.  This is especially so
>> with respect to intellectual property law.
>>
>> -------------------------
>> Paul N. Courant
>> University Librarian and Dean of Libraries
>> Harold T. Shapiro Collegiate Professor
>>     of Public Policy
>> Professor of Economics and of Information
>> The University of Michigan