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âFair Useâ Factors

‘Fair Use’ Factors

December 17, 2012
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" The fair use concept originally arose in association with written materials, but now applies to virtually all types of works that are subject to U.S. copyright laws. "

Legal Use of a Copyrighted Work Without Permission

Copyright law gives copyright owners the exclusive right to publish and distribute copies of their works. This means that owners of the copyrights in works such as photographs, videos, music and software are provided with a legal monopoly to exploit their works.

But in the U.S. a copyright owner’s rights are subject to an important limitation that allows others to make use of the owner’s copyrighted works without permission and without any required payment of a fee or royalty. This type of unauthorized, but nevertheless legal, use is allowed under what is known as the “fair use” doctrine. Often just called “fair use,” it is a legal concept that acts as an express limitation of the enforceability of the exclusive rights granted to copyright owners under U.S. copyright law. It effectively allows a person or a company to make limited and reasonable use of another’s copyrighted work without permission as long as the use does not otherwise prejudice the copyright owner’s rights or interfere with the owner’s normal exploitation of the work.

The fair use doctrine has long been a part of American copyright law. It was recognized under the common law of the U.S. for more than one hundred years before it was expressly incorporated into federal statutory copyright law under the 1976 Copyright Act (see 17 U.S.C. §107). The concept originally arose in association with written materials, but now applies to virtually all types of works that are subject to U.S. copyright laws.

The fair use doctrine often comes into play as a defense to allegations of copyright infringement. The challenge for both the party invoking the fair use doctrine as a defense to alleged infringement, and the party seeking to overcome that assertion, is the determination of whether the unauthorized use of the subject copyrighted work is indeed a fair use or merely a copyright infringement. Fair use analysis should, therefore, be the first step for any party wishing to use someone else’s copyrighted work (or something substantially similar to it) without permission. And while only a court of law can make a determination of whether a use is a fair use, understanding what constitutes fair use can help adult content producers better focus copyright enforcement efforts by recognizing when some uses that initially appear to be infringements are likely to fall within the ambit of the fair use doctrine.

Determining Fair Use

So what kind of uses of another party’s copyrighted work will qualify as a fair use? Unfortunately, the boundary between what is a fair use and what is an infringement is far from clear. Section 107 of the Copyright Act provides some assistance by setting forth a number of uses that might be considered “fair”. Specifically, Section 107 lists criticism, comment, news reporting, teaching, scholarship, and research. The list is not exhaustive, however. For example, fair use may, but does not always, include uses such as the reproduction of a photograph, a movie clip, or a part of a song that is gifted to a relative or a friend. Correspondingly, some uses that may seem to come within the categories listed in Section 107 might not be deemed to be a fair use.

Ultimately, the determination of whether a specific use of a copyrighted work constitutes a fair use requires a fact driven application of the following four factors set forth in Section 107 of the U.S. Copyright Act:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and,
  • The effect of the use upon the potential market for or value of the copyrighted work.

The Purpose, Character of the Use

This factor focuses on the new work in question. Specifically, what the purpose of the new work is and how it makes use of the original copyrighted work. This factor functions to evaluate whether the new use in question helps fulfill one of the purposes of copyright law, specifically whether it stimulates creativity for the enrichment of the general public or merely rides on the coattails of the creativity of the original work for reasons of personal profit.

Therefore, to justify the unauthorized use of another’s creative work as fair, it must be shown to either advance knowledge or the progress of the arts through the addition of “something new.”

Applying this part of the fair use test, courts will often question whether the new work is “transformative.” For this part of the evaluation to weigh in favor of a finding of fair use, the new use must transform the original work and not merely be a derivative version of it. Therefore, the purpose and character of the new use may support a fair use if it changes the original work into something new or unexpected, by adding new meaning or insight, for example. Examples of such transformative uses are the creation of a parody or social commentary of the original.

Courts have also sometimes viewed unauthorized copies of copyrighted works made as part of the production of new technologies to be transformative uses. For example, search companies that make thumbnail copies of images to make them searchable have been deemed in some cases to be transformative fair uses because the copies were being made for the transformative purpose of search indexing, rather than simple viewing.

This part of the fair use analysis also addresses the issue of whether the new use is exclusively or primarily for commercial gain. It often operates in a court’s analysis in conjunction with the fourth factor discussed below. Court decisions very often, but not always, find in favor of fair use where the use is a noncommercial use or where commercial gain is clearly a subordinate purpose.

The Nature of the Copyrighted Work

This prong of the fair use analysis focuses on the original copyrighted work. Often copyrighted works contain facts and ideas which, in and of themselves, are not copyrightable. Copyright only protects the recorded or “fixed” creative expression of ideas and facts.

The nature of the original work, or parts thereof, that are used in the new work is examined in a fair use analysis to prevent the private ownership of facts and ideas that should rightfully remain in the public domain. Facts are considered public property, so a use is more likely to be fair use if factual content, say from a nonfiction work, is used, versus creative content from a fictional or other creative work.

It is important to note, however, that copying facts, which is allowed, is not the same as copying the way facts are arranged in the original work. Since the selection and arrangement of facts can be highly creative, ripping off the way facts were previously presented in another work may not constitute fair use. Also, use of another author’s interpretation of facts, especially without citation, will often not be a use supporting a finding of fair use.

The Amount and Substantiality of the Copyrighted Work Used

This is what I call the “size matters ... sort of” prong. The third factor assesses the quantity or percentage of the original copyrighted work that has been used in the new work. Generally speaking, the less of a previous work used, the more likely that the use will be deemed to be fair.

I have often heard from lay persons, and even a few attorneys, that use of less than 10 percent of a work will be considered a fair use. Well, you can file that notion in the Urban Myth round file.

There is simply no hard-and-fast quantitative rule when it comes to the amount of a copyrighted work that can be used without the owner’s permission and still be a fair use. For example, if one uses the most recognizable part of a very famous song, even if the piece used is very short, the shortness of the used piece will not guarantee that the use will be deemed to be a fair use.

On the other hand, use of a large amount of a highly recognizable work may be deemed to be a fair use under certain circumstances. For example, a successful parody often relies upon the ability to recognize the original work being parodied. Because of this, use of even large amounts of a preexisting work has been deemed to be a fair use in appropriate circumstances.

In sum, while there is no simple mathematical formula regarding how much of a copyrighted work can be used and still be a fair use, it is generally more likely to be a fair use if the amount taken is small or not central to the copied work.

Effect Upon the Potential Market for the Original

The fourth factor is an assessment of effect that the new use has had, or will have, on the copyright owner’s ability to exploit his or her original work. In applying this part of the test, a court will not only investigate whether the defendant’s specific use of the work has harmed the market for the copyright owner’s work, but it will also evaluate whether the new use (and possibly similar new uses by others) will likely harm the potential market of the original.

When asked by a client to explain how this prong is generally applied I will often respond by telling the client to ask himself or herself the following: will the new work be likely to cause the public to purchase or otherwise obtain the new work instead of the original? If the answer is yes, it is likely (but by no means certain) that the application of this prong will weigh in favor of a finding against fair use.

Here’s another way to look at how this factor is applied. If the use of the original copyrighted material results in the creation of something that is sufficiently different from the original that the market value of the original work is not substantially affected, application of this part of the test will likely favor a finding of fair use.

It is important to remember that all four statutory factors must be used in each case to evaluate whether a use is fair. Further complicating the process of determining whether a use is fair is the fact that the four analytical factors set forth in the Copyright Act are nonexclusive. Judges are free to consider additional factors in deciding whether a use is a fair use.

Whether the four factors are used alone or with additional factors, no one factor alone is supposed to determine the outcome of a fair use analysis. For example, while fair use is intended to apply to teaching, the fact that a use is exclusively directed to an educational purpose will not guarantee that the use will be determined to be a fair use. This is because “purpose and character of the use” is only one of four factors that users must analyze in order to conclude whether the use is fair, and therefore lawful.

But in practical terms, while all of the four fair use factors set forth in the Copyright Act, at minimum, are supposed to be used in the analysis, the fourth factor is often the most important. It is a factor first among equals, if you will. Thus, if the new work resulting from the use of the copyrighted material is not a market substitute for the copyrighted work, there is a reasonably good chance that the use will be deemed to be fair use.

But notwithstanding the disproportionate importance of the commercial use factor, because the fair use determination is so fact-specific, I cannot provide you with any simple axiomatic rules such as noncommercial use will always be a fair use, or a commercial use can never be a fair use. In fact, the copying of an entire copyrighted work under the right circumstances may well be a fair use, even if the use is commercial.

Unfortunately, the flexibility of the fair use factors leads to more than a fair amount of vagueness and unpredictability. As a result, one simply cannot know with certitude that a use is a fair use until a court makes that determination. And this, in turn, means that a party that wants to use another party’s content without permission always risks the possibility of a copyright infringement action. Because of this, it is often advisable to simply request permission of the copyright owner to use the content in question. But where obtaining such permission is not likely, feasible or economically practical, and/or you believe that the fair use doctrine might apply to your situation, you should consult an attorney before you engage in any activity that might be deemed to be a copyright infringement. This is a particularly important point to remember because the fair use doctrine is not a right, it is a defense to copyright infringement. So if you use a work without permission and it is not deemed to be a fair use, unless the work is in the public domain or is otherwise not protectable under the copyright laws, it will likely be an infringement that could subject you significant financial liability.

Illustrative Examples of Fair Use Decisions

Decisions finding fair use:

  Rev. Jerry Falwell made several hundred thousand copies of a page published in Hustler magazine on which Larry Flynt made disparaging statements about Falwell. Falwell distributed the copies as part of a fund-raising effort. The court held that the copying did not diminish the sales of the magazine and would not adversely affect the marketability of back issues. (Hustler Magazine, Inc. vs. Moral Majority Inc., 606 F. Supp. 1526 (C.D. Cal. 1985).

  A picture published in Screw magazine depicting the Pillsbury Doughboy character engaged in sexual acts was held to be a fair use. In its opinion, the court commented that while it did not condone the defendant’s method of “assault on the corporate citadel”, it acknowledged that value judgments have no place in its fair use analysis. Pillsbury Co. vs. Milky Way Productions Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981).

  A search engine company’s creation and website distribution of small thumbnail version reproductions of another party’s much larger images was deemed to be fair use, in part because the thumbnail images were much smaller and of much poorer quality than the original photos and did not undermine the potential market for the sale or licensing of the full-sized images.

The court also noted that the search engine’s publication of the thumbnail images served to help the public access the owner’s full sized images by indexing them while reproducing them. Kelly vs. Arriba-Soft, 336 F.3d. 811 (9th Cir. 2003). In a similar case, Google’s search engine reproduction of thumbnail images of nude models published on a subscription website owned by adult content producer Perfect 10, Inc. was also held to be a fair use using an analysis similar to that used in the Kelly vs. Arriba-Soft case. Perfect 10, Inc. vs. Amazon.com Inc., 508 F. 3d 1146 (9th Cir. 2007).

  In a separate fair use case involving Google, the search engine company’s displaying of cached websites in search engine results was held to be a fair use and not an infringement in large part because Google was considered by the court to be passive in the activity (users could choose whether to view the cached link). In addition, the court noted that Google had an implied license to cache web pages since owners of websites have the ability to turn on or turn off the caching of their sites using tags and code. Field vs. Google Inc., 412 F. Supp. 2d 1106 (D. Nev. 2006).

  The U.S. Supreme Court held that 2 Live Crew’s “Pretty Woman” parody of the Roy Orbison and William Dees song “Oh, Pretty Woman” was a fair use because it was unlikely that 2 Live Crew’s work would act as a substitute for the original, since the two works usually serve different market functions. Campbell vs. Acuff-Rose Music, 510 U.S. 569 (1994).

Decisions finding no fair use:

  Publication of a poster of topless Dallas Cowboy cheerleaders created by copying and altering the original photograph of fully dressed Cowboy cheerleaders was not a fair use of the original work. Dallas Cowboy Cheerleaders Inc. vs. Scoreboard Posters Inc., 600 F.2d 1184 (5th Cir. 1979).

  The use of 17 Walt Disney cartoon characters in an underground comic book that portrayed Mickey Mouse and the other Disney characters engaging in sex and drug-taking was found not to be a fair use. Walt Disney Productions vs. Air Pirates, 581 F.2d 751 (9th Cir. 1978).

  The creation of a Harry Potter encyclopedia was determined not to be a fair use because of extensive verbatim use of text from the original Harry Potter books. The court reached its decision despite the fact that the new work’s combining of Harry Potter terms and lexicons into a one volume work was acknowledged by the court to be “slightly transformative.” Warner Bros. Entertainment Inc. vs. RDR Books, 575 F. Supp. 2d 513 (S.D. N.Y. 2008).

  A court held that a book in which the author mimicked the style of a Dr. Seuss book while retelling the facts of the O.J. Simpson murder trial was a satire, not a parody because the book did not poke fun at or ridicule Dr. Seuss but instead merely used Dr. Seuss characters and style to tell the story of the murder. In its finding of no fair use, the court focused on the fact that the author’s work was a commercial use that was not transformative. Dr. Seuss Enterprises, L.P. vs. Penguin Books USA Inc., 109 F.3d 1394 (9th Cir. 1997).

(Additional examples of fair use cases can be accessed at: http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/chapter9/9-c.html.)

A Word About Porn Parodies

There has been a proliferation of porn parodies in the last few years. As a result, some may believe that use of any preexisting Hollywood character, plot or series in a sexually explicit adult motion picture is allowable. That is simply not the case for many reasons.

For example, famous preexisting motion picture and television content of the type that is likely to be suitable to be parodied often includes rights-use issues involving more than copyrights. Often the desired use of such material will also require the use of another party’s trademarks, for example.

Unlike copyright law, there is no statutory fair use limitation in trademark law in the U.S.. Often the determination of what constitutes allowable unauthorized use of a trademark in a creative work turns on how such use impacts free speech rights, a broad topic that is far beyond the scope of this article.

Additionally, to the extent that the fair use defense under copyright law can apply to a porn parody, it is important that the work be, in fact, a bona fide parody and not just a use of famous familiar material in a sexually explicit setting. (See, for example, the Dr. Seuss Enterprises case previously described.)

The bottom line is any adult content producer that wants to make use of preexisting characters, plots, series, etc., should seek the advice of competent counsel before doing so.

Note of Caution Regarding Fair Use and DMCA Take Down Notices

Today many adult entertainment companies are issuing take-down notices to websites directly or through the engagement of copyright enforcement agents. It is important to remember that the Digital Millennium Copyright Act requires that all DMCA takedown notices be issued in good faith. One court has invalidated a DMCA takedown notice on the ground that there was an absence of good faith on the part of the takedown notice issuer because the copyright owner did not consider the issue of whether the takedown recipient’s use was a fair use. Lenz vs. Universal Music Corp, 572 F. Supp 2d 1150 (N.D. Cal. 2008). In light of the case, I believe that it is advisable to appropriately consider whether the fair use doctrine would apply to a DMCA notice recipient’s use of a work referenced in the takedown notice prior to its issuance.

Some Final Thoughts

Because copyrights are property, specifically intellectual property, the notion that a non-owner of property can use it without the owner’s permission may seem a bit alien to many. But it is important to remember that the intent behind the government grant of the copyright monopoly in the first place is to encourage creativity and stimulate thought.

Many people are surprised when I tell them that the purpose of copyright law is not to protect the work of creatives, but it is instead, as stated in Article I, Section 8, Clause 8, of the U.S. Constitution, “to promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

It is easier to understand why and how copyright law in the U.S. attempts to achieve a balance between public interest and the rights of authors and artists.

Indeed, copyright law seeks to encourage content creators to create works by providing to them a time limited exploitation monopoly in their creative works so that the public will become the ultimate beneficiary of their efforts after their exploitation monopoly ends.

Since the core focus of copyright law is, therefore, the public interest and not the transient interests of the creators of the copyright works, in many ways, copyright law leans towards public concerns whenever there is conflict in those interests. This is certainly the case where issues involving freedom of expression are concerned.

As a result, the fair use component of copyright law may not seem fair or just to the copyright owner. But it serves a fundamental public interest in ensuring that you and I can communicate our ideas and comment on our culture. Moreover, the fair use doctrine also prevents copyright owners from overreaching and depriving others of their rights, for example, by censoring comments they don’t like.

Gregory A. Piccionelli is an intellectual property attorney specializing in adult entertainment matters. He can be reached at Piccionelli & Sarno at (818) 201-3955 or greg@piccionellisarno.com.


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