Re: Fair use/fair dealing - a fantasy?

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

[Liblicense moderator's note:  Please accept our apologies for a
combination of Microsoft and Listproc having messed up Mr. Dames's message
of last night.  Because it is so substantive, we're sending in through in
a cleaned-up version tonight -- we hope.]

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 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