Last week I had the privilege of addressing the Dallas Bar IP Section on the subject of the current controversy over copyright and prior art submissions in patent prosecution. Four lawsuits have been filed by publisher John Wiley & Sons and the American Institute of Physics against law firms alleging copyright infringement for reproducing and distributing various scientific articles in the course of preparing and submitting patent applications. The lawsuits allege that the law firms violated copyright in the articles at issue by (1) making and distributing copies of the articles to the USPTO in connection with patent applications; (2) making additional copies of articles cited in patent applications; and (3) making copies of articles that they neither cited nor submitted to the USPTO for internal purposes. One of the cases apparently settled over the summer. In two of the remaining cases, the plaintiffs have amended their pleadings to drop the allegations concerning submissions to the USPTO, leaving only the allegations regarding internal law firm copying.

The copyright and patent communities have taken note of these lawsuits, and there is an ongoing discussion regarding whether the practices at issue constitute fair use of the articles in question. In January of 2012, the General Counsel of the USPTO issued a memorandum asserting that the accused practices constitute fair use, and the USPTO has intervened in two of the cases as a defendant and counterclaimant, seeking a declaration of noninfringement. In this post, I will give an overview of the fair use doctrine and apply it to the copying at issue in the prior art cases.

Section 106 of the Copyright Act reserves six exclusive rights to the copyright owner: (1) reproduction; (2) preparation of derivative works (works that transform, recast or adapt preexisting works, such as a movie based on a book); (3) distribution; (4) public performance; (5) public display; and (6) public performance of sound recordings by digital audio transmission. The prior art practices at issue in the pending lawsuits implicate two of these rights: reproduction and distribution.

Fair use is an affirmative defense to infringement. It protects copying that would constitute infringement but is allowed for reasons of social policy, because the copying is considered to promote some form of social good. It has been described as an “equitable rule of reason” that “permits 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.”

The fair use doctrine originated as judge-made law in the late 19th century and was eventually codified as Section 107 of the Copyright Act of 1976. The preamble to Section 107 enumerates six examples of potentially fair uses: (1) criticism; (2) comment; (3) news reporting; (4) teaching; (5) scholarship; and (6) research. This list is nonexclusive and is meant to give general guidance about the types of uses that are considered to be fair. In any specific instance, however, copying that falls within one of the enumerated categories may not be fair, depending on the particular circumstances of the use. Conversely, a use that is not on the list may well be fair.

Courts look at four factors to determine whether a use is fair. They are: (1) the purpose and character of the use, which includes three subfactors, (a) commerciality, (b) transformative use, and (c) good faith; (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 on the potential market for or value of the copyrighted work.

Purpose and character of the use

Commerciality

The fact that copying may take place in a commercial context does not automatically render the copying unfair. Purely commercial uses may, indeed, be fair. The Supreme Court has acknowledged that most of the presumptively fair activities in the preamble of Section 107 are conducted for profit in this country (think, for example, of news reporting and any of the major network news programs). As the Supreme Court itself quoted Samuel Johnson, “No man but a blockhead ever wrote, except for money.”

Thus, a commercial use may be fair if it serves some greater social benefit. By way of example, in Triangle Publn’s, Inc. v. Knight-Ridder Newspapers, the publishers of TV Guide sued the Miami Herald for reproducing the cover of TV Guide in a comparative advertisement promoting the Miami Herald’s competing TV Book. Although the advertisement itself was plainly commercial in nature, the display of the TV Guide cover was fair because the advertisement was truthful; the Herald did not attempt to palm the cover off as its own; and social policy favors comparative advertising because assists consumers in making rational purchase decisions, lowers prices, and encourages product improvement and innovation.

A direct financial benefit is not necessary for a finding of commerciality. In A&M Records, Inc. v. Napster, the Ninth Circuit found that file sharing of copyrighted music through the now-infamous peer-to-peer service was commercial, and not fair, because repeated and exploitative unauthorized copies were made to save the expense of buying authorized copies.

Moreover, in assessing commerciality, the appropriate inquiry is whether the infringer seeks to exploit the original copyrighted work itself for commercial gain, not whether the new work is commercial.  In Haberman v. Hustler Magazine, Inc., the reproduction of photographs inside Hustler magazine was held not commercial because Hustler did not use the photographs to advertise or promote the magazine.

In the prior art cases, the plaintiffs allege commerciality because the firms are using the works at issue as part of the “profit-making activity” of their legal services businesses without providing compensation to the plaintiffs. The law firms are likely to argue that although they are commercial entities engaged in profit-making activity, they do not seek to exploit the creative expression in the articles for commercial gain. There is ample support in the case law for this argument.

Transformative use

It’s indescribable! It’s indestructible! Nothing can stop it! It’s . . . The Blob That Ate Fair Use.

Transformativeness has significantly overtaken fair use analysis in the last two decades.  The notion was first articulated by Judge Pierre Leval of the Second Circuit in a 1990 article in the Harvard Law Review entitled Toward a Fair Use Standard, and was picked up by the U.S. Supreme Court in 1994 in Campbell v. Acuff-Rose Music, Inc.  A transformative use adds a new creative expression or meaning to the original copyrighted work.  It conveys a different message and serves a different purpose than the original.

Transformativeness heavily influences the balancing of the four fair use factors. The more transformative a use is, the less weight a court will accord to commerciality. Moreover, the more transformative a use is, the less likely it is that a court will find that the use affects the market for the original copyrighted work (factor four). Thus, although not required for a finding of fair use, the Supreme Court has stated that transformative works “lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.” In practical effect, if a defendant can articulate a reasonable argument that the accused use is transformative, that defendant is well on the way to a successful fair use defense.

A transformative use does not require a physical transformation of the original copyrighted work. Even an unaltered reproduction of a work can be transformative if the purpose of the secondary use is substantively different than the use made by the copyright owner. In Bill Graham Archives v. Dorling-Kindersley Ltd., a publisher reproduced several Grateful Dead concert posters in a biographical work that visually documented the band’s 30-year history in timeline format. The Second Circuit Court of Appeals held this use transformative because the original purpose of the posters was artistic expression and promotion of concerts, whereas the reproduction of the posters in the biography was as historical artifacts for the purpose of documenting the occurrence of the concerts.

By contrast, a secondary use that serves the same purpose as the original copyrighted work is not transformative. Ringgold v. Black Entm’t Television, Inc.involved the reproduction of a poster depicting artist Faith Ringgold’s story quilt entitled “Church Picnic.” Producers of the television show “ROC” used the poster as a set decoration. It appeared in the background of a scene set in a church and was visible for 2-4 seconds at a time, for a total of approximately 27 seconds. The court found that the use was not transformative because its use as a set decoration served the same decorative function as the original poster.

American Geophysical Union v. Texaco, Inc.(2d Cir. 1994) is an opinion that will likely feature prominently in the prior art plaintiffs’ briefing. In that case, publishers of scientific journals sued Texaco, alleging that its research scientists were infringing copyright in the journals by photocopying individual articles for research and reference purposes. Texaco lawfully obtained copies of the journals, but the photocopying of individual articles for later use was unauthorized. The Second Circuit found that this copying was not transformative because it did not alter the articles themselves, and the copies were being used for the same purpose as the original journals – namely, research and reference.

A number of cases have also addressed the fair use of copyrighted works in the context of legal proceedings. In Jartech v. Clancy(9th Cir. 1982), the introduction of still images from an adult film in a nuisance abatement action against the infamous Mitchell brothers was found to be a different “intrinsic use” than the original adult film, and was fair. This case predated Judge Leval’s coining of the term “transformative,” instead applying the term “intrinsic use” to the same underlying idea and rationale. Similarly, in Bond v. Blum(4th Cir. 2003), the introduction of a manuscript in a child custody dispute to demonstrate that the home environment of the ex-spouse was unsuitable for young children was for the manuscript’s evidentiary value and not for a commercial purpose. Accordingly, it was a fair use.

The body of fair use case law provides the prior art defendants with a persuasive argument that their use of the journal articles at issue is transformative, and should be considered to be fair. This is particularly the case with respect to the practice of submitting copies of prior art to the USPTO. In order to demonstrate that an invention is original and entitled to patent protection, an inventor must disclose “prior art” – all publicly available information that is relevant to the claim of originality – to the USPTO. This is plainly transformative. Patent applicants are not seeking to exploit the original expression in scientific journal articles; they are merely complying with a legal requirement in order to gain patent protection for their inventions.

Because of the Second Circuit’s holding in American Geophysical Union v. Texaco, the argument is slightly less forceful with respect to the alleged law firm practice of making multiple copies of journal articles for internal purposes in the course of preparing patent applications. Nonetheless, the law firms make such copies for the purposes of rendering legal advice, not exploiting the articles for their intrinsic commercial value, whatever that might be. Thus, the prior art defendants have a reasonable argument as to the transformativeness of that use as well.

Good faith

Good faith is rarely at issue, but courts have held that fair use presupposes good faith and fair dealing. Thus, the deliberate exploitation of a copyrighted work for personal gain weighs against fair use. If a user first seeks permission to use the work, and the copyright ower denies permission, that does not negate fair use, nor does failure to seek permission.

In Harper & Row v. The Nation Enterprises (S. Ct. 1985), the Nation obtained a “purloined” copy of the soon-to-be-published manuscript of former President Ford’s autobiography. In an effort to “scoop” the official publication of the autobiography, the magazine swiftly published an article quoting a number of passages from the book. The Supreme Court found that the Nation had not acted in good faith, and held that the use was unfair.

In Rogers v. Koons, the sculptor Jeff Koons purchased a postcard created by photographer Art Rogers depicting a couple holding their eight German Shepherd puppies in their laps. Koons gave the postcard to his studio staff to use as the model for a sculpture. Before doing so, however, he deliberately removed the copyright notice from the postcard. In the ensuing copyright infringement litigation, the court found that the removal of the copyright notice was in bad faith and weighed against fair use.

There has been no allegation in the prior art cases that the defendant law firms acted in bad faith.

The nature of the copyrighted work

This factor rarely plays a significant role in fair use analysis. Courts will address the factor, but it does not often appear to influence the outcome very often.

Copyright protects the original expression of ideas; facts are not copyrightable. Accordingly, the scope of copyright protection is greater with respect to creative, rather than factual, works. Nonetheless, the articles at issue in the American Geophysical Union case had a “manifestly factual character” and were not “within the core of the copyright’s protective purposes,” yet the court found that Texaco’s copying was not fair.

The scope of fair use is broader with respect to works that have already been published. This is because the author has an interest in deciding whether and when to publish a work. In Harper & Row, the fact that the Ford memoir was unpublished weighed against a finding of fair use. In the Hustler case, the photographs at issue had already been published, which weighed in favor of finding fair use.

The articles at issue in the prior art cases, like the ones in American Geophysical Union, will likely be found to have significant factual content, though they will also have an expressive component. Plainly, they have all been previously published. This factor is unlikely to play an important role in resolution of the disputes.

Amount and substantiality of the use

This factor measures the amount and substantiality of the use as compared to the copyrighted work as a whole. It involves a quantitative and qualitative analysis.

The quantitative analysis looks at how much of the original copyrighted work was used. The size of the taking in relation to the size of the allegedly infringing work is not relevant; “no plagiarist can excuse the wrong by showing how much of his work he did not pirate.” Copying an entire work does not preclude fair use, as is evident from the reproduction of entire posters in the Bill Graham Archives case.

The qualitative analysis examines whether the copying captures the “essence or value” or “heart” of the copyrighted work. In Harper & Row, for example, the quoted passages were an insubstantial portion of the Ford memoir, but the Nation magazine took the “heart of the book” – the most powerful passages concerning Ford’s pardon of Nixon. This weighed against a finding of fair use.

As with the second factor, the factor concerning the amount of the taking is rarely dispositive. In the prior art cases, discovery will presumably show that entire articles were copied. This is unlikely to have a material effect on the outcome of the disputes.

Market effect

This factor is designed to test whether the secondary use usurps the market for the original work. It is arguably the most important of the four fair use factors – arguable because, notwithstanding the fact that many cases have referred to it as the most important factor, transformativeness has overwhelmed fair use analysis in recent years. Indeed, the more transformative the use is, the less likely it is to usurp the market for the original work.

In assessing the market, courts look at the primary market for the copyrighted work (the market the copyright owner currently exploits) and derivative markets – but only those that the copyright owner would be likely to develop. For example, the Ninth Circuit found in Mattel, Inc. v. Walking Mountain Prods.(9th Cir. 2003) that so-called “Food Chain Barbie” photographs, which depicted nude Barbie dolls juxtaposed with vintage kitchen appliances in a variety of absurd and often sexualized poses, were not likely to usurp the market for Barbie dolls. The court observed, “We think it safe to assume that Mattel will not enter [the market for adult-oriented artistic photographs of Barbie] or license others to do so.”

In the prior art cases, the plaintiffs allege that there is a market for licensing articles to law firms. Indeed, the Copyright Clearance Center, a permissions clearinghouse for printed publications, offers an “Annual Copyright License for Businesses.” According to CCC press releases, a number of law firms have signed on to this license, including Mintz Levin; Fenwick & West; Fitzpatrick, Cella, Harper & Scinto; and Hovey Williams, the defendant in the prior art case that appears to have been settled. The CCC license is not necessarily a complete solution for patent practitioners, however; it is not guaranteed to represent the copyright owners for all publications that an inventor may wish to cite in connection with its patent application.

The Bill Graham Archivescourt, however, held that a copyright owner “cannot prevent others from entering fair use markets merely by developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work.” Similarly, the court in Lennon v. Premise Media(S.D.N.Y. 2008) found the use of a short clip of John Lennon’s song “Imagine” in a documentary to be fair, notwithstanding the existence of a robust market for song licensing, because the use was transformative. This suggests that the existence of the CCC license, or other market options for licensing the content in question, may not matter for purposes of the market harm factor.

Conclusion

The pleadings are closed in the three prior art cases that remain pending, and the parties appear poised to move into the discovery phase.  Patent practitioners will be following the progress of the lawsuits closely.  I will post developments as they occur. 

In the meantime, please weigh in with your thoughts.  Do you think the law firm defendants have a strong fair use argument?