Vol. 78, No. 4, April
Don't be a Copycat: Reproducing Copyrighted Works
Unbridled reproduction of copyright protected works can land your
firm in detention. Unless, of course, you've got a "fair use" hall
by Bev Butula
Attorneys must review extensive amounts of legal literature to
research cases, keep up-to-date on changes within their field, and
advise clients. Attorneys must constantly read case law, newsletters,
law review articles, treatises, periodicals, and information found on
the Internet. Most of these materials are copyright protected. A clear
understanding of the "fair use" doctrine is important before making
copies of these materials. This article explores the "fair use" doctrine
in the context of a law firm environment and also serves as a reminder
for firms to evaluate internal procedures to ensure that daily
activities truly are fair use.
The Copyright Act grants a copyright owner the exclusive right to
reproduce or distribute copies, prepare derivative works, or publicly
display or perform a work. The statute, however, includes some
exceptions to those rights. The fair use doctrine is probably the best
known. This doctrine permits copying portions of copyrighted materials
for certain purposes including research, criticism, teaching, and
comment. Many attorneys erroneously consider their use of copyrighted
materials to be exempted as "fair use." The applicable statute, 17
U.S.C. § 107, clearly states that reproduction for the purpose of
research is not an infringement. Courts, however, typically consider
four elements when ruling on fair use. Section 107 of the Copyright Act
of 1976 outlines these elements:
"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."
Explaining Each Factor
1) The purpose and character of use. A court is
likely to find fair use if copying is done for an educational or
noncommercial purpose. The use should not have a financial reward.
Generally, duplication for current research or litigation is not an
infringement. However, law firms are typically commercial ventures, and
photocopying could have "commercial implications." As an example,
photocopies "for a specific client matter are charged to the client with
a profit margin for the law office being added to the actual
Another facet of this factor is whether the use is transformative,
that is, does the use "transform" the work in some way? For fair use
consideration, it is important to add value or create a new work, rather
than just possessing a mere reproduction. Transformative changes to the
copy should give it a different purpose or new meaning.
2) The nature of the copyrighted work. The heart of
this factor is whether a work is of a creative nature or of a factual
nature. Copying of an item that is comprised of facts, is based on
public documents, or is for scholarly publication or news reporting is
more likely to be considered fair use. A ruling of fair use is less
likely if the copied piece is fiction or a composition designed to
3) The amount and substantiality of the portion used in
relation to the copyrighted work as a whole. For this factor,
analysis includes both the quantity and quality of the reproduced item.
For quantity, no precise amounts exist. The test looks to the
relationship between the amount used by the copier and the length of the
entire item. The user should not take more than is necessary. Also, if
the true essence of a lengthy work is a very small portion, reproducing
that small portion may constitute an infringement.
4) The effect of the use on the potential market for or value
of the copyrighted work. The primary component of this factor
is the actual or potential financial harm to the publisher. Making a
copy of a software program instead of purchasing an additional copy is
an example of financial harm to the copyright holder. The reason for
reproduction is also important. Copies made for individual research
probably will not have a significant impact on the marketability of the
item. However, a negative impact may exist when a copy is made so that a
branch office does not have to buy an additional copy.
Several cases have analyzed these four factors. One case that is
applicable in the law firm setting is American Geophysical Union v.
Texaco.2 The parties chose, at random,
one scientist's copying habits as a basis for the court's decision. The
scientist, Dr. Chickering, made copies of eight articles from a routed
journal that he believed would "facilitate his current or future
professional research."3 Chickering then
placed these photocopies in a file for future reference. The federal
district court ruled that making these unauthorized copies of scientific
journals was not fair use. The appellate court affirmed, focusing on the
systematic copying of the articles and "avoiding the necessity of paying
for license fees or for additional subscriptions."4 It is important, however, to remember that courts
evaluate each fair use case on its individual facts and
Before considering the impact of these four factors in the law firm
context, it is helpful to briefly analyze each factor and how the
Texaco and other courts have interpreted them.
Analyzing Each Factor
1) The purpose and character of use. Courts look for
commercial gain. This is not necessarily a clear cut determination. The
commercial gain was obvious in Basic Books Inc. v. Kinko's Graphics
Corp,. in which the court determined that placing copied articles
and chapters into a university "course book" and selling them was a
commercial endeavor.5 In Texaco,
the court also concluded that the use was commercial. It did not ignore
the for-profit nature of the company and stated that the research from
the materials copied might develop into something profitable.
Campbell v. Acuff-Rose Music addressed the other aspect of
this factor - whether the use is transformative. The Campbell
court stated that transformative works "lie at the heart of the fair use
doctrine's guarantee of breathing space within the confines of
copyright."6 Courts review if the
reproduction ultimately results in a new work with value or if the use
is "merely an untransformed duplication" that adds nothing different
from the original.7
The court in Texaco stated the first factor favored the
publisher because the primary purpose was a "systematic institutional
policy" of circulating journals for scientists to make copies, "thereby
serving the same purpose for which additional subscriptions are normally
sold, or ... licenses may be obtained."8
In essence, the purpose was to create a personal library or archive of
2) The nature of the copyrighted work. Courts tend
to favor a finding of fair use when the material is scientific or
factual. The U.S. Supreme Court in Harper & Row Publishers v.
Nation Enterprises observed that "the law generally recognizes a
greater need to disseminate factual works than works of fiction or
fantasy."9 In Texaco, the court
found only this factor favored fair use. The "manifestly factual
character" of the articles copied precluded the Texaco court
from "considering the articles as within the core of the copyright's
3) The amount and substantiality of the portion used in
relation to the copyrighted work as a whole. Most people
realize that copying an entire book or newsletter is an infringement,
but many are not aware that individual journal articles within a
periodical have independent copyright protection. Texaco
stressed that each article is an "entire" work.
Under Campbell, both the quantity reproduced and the
importance of the information reproduced are significant
considerations.11 There is no exact amount;
individuals must examine both "how much" and "what" when items are
4) The effect of the use on the potential market for or value
of the copyrighted work. The fourth factor concerns how the use
would or could financially harm the copyright holder. The Supreme Court
has taken a varied stance on the importance of this factor.
Harper characterized this as "undoubtedly the single most
important element of fair use."12 However,
Campbell cautioned that, "[a]ll [the factors] are to be
explored, and the results weighed together, in light of the purposes of
The Texaco court ruled in favor of the publishers, stating
that a means to pay for the use existed. The court recognized that the
copyright owner could receive royalty payments for the copying via a
license with the Copyright Clearance Center. (Please note that some
legal publishers do not offer reproduction through the Copyright
This review of the four factors that help define "fair use" suggests
that some daily activities within a law firm could constitute copyright
infringement. Texaco clearly frowns on the systematic,
institutional routing and archival copying of articles that become part
of personal libraries in a for-profit setting. It is important to also
note that the court stated, "our ruling does not consider photocopying
for personal use by an individual."14 The opinion does not decide the case that would
arise against a professor or independent researcher.
What guidance does the above analysis provide regarding firm
photocopying, routing, and downloading of copyrighted material? Exposure
for copyright infringement is not contingent on the size of the firm but
rather on the use or application of the materials. As an example, if a
small firm adds a copyrighted item to its Web page, that material
becomes extremely visible and susceptible to an infringement action.
The next section discusses ordinary law firm practices and copyright
issues that relate to them.
Duplication of Materials Within a Law Firm
Copying of case law, newsletters, and treatises.
Judicial decisions, administrative agency opinions, court rules, and the
like are generally considered to be in the public domain. (However,
enhancements created by the reporters' publishers are copyright
protected.) Copying from these publications is often in the course of
research or litigation and thus deemed fair use.
Congress, however, recognized that newsletters require special
consideration. House Report 4-1476 (1976) specifically addressed routine
photocopying of newsletters, stating, "[a]s a general principle, it
seems clear that the scope of the fair use doctrine should be
considerably narrower in the case of newsletters than in that of either
mass-circulation periodicals or scientific journals." In Lowry's
Reports v. Legg Mason, the court upheld a jury's verdict that a
financial firm infringed on a publisher's copyright by reproducing a
newsletter, distributing it via email, and posting it on the firm's
intranet without permission.15
Determining what is "fair use" when making copies from treatises
requires applying the four factors referenced above. Remember, verbatim
copying is not transformative. Is the copy for current research or
"future review"? Evaluate each factor to determine what is
Online services. More and more vendors are offering
resources online. Licensing agreements often outline the vendors' policy
on reproduction of those resources. Many vendors forbid the activities
mentioned in Texaco, specifically systematic routing or the
making of multiple copies. Some online providers indicate that printing
or downloading of materials must be for "current" use. Others grant
authorized users permission to reproduce or print materials for personal
use or to educate the searcher. See the accompanying sidebar for
examples of some vendor notices.
The majority of publishers with online services require that the
reproduced materials clearly contain the publisher's copyright notice
and they prohibit reproduction for commercial purposes.
Routing of periodicals or tables of contents. Many
firms receive periodicals in the mail and route them to an established
list of recipients. Each attorney reads articles of interest and then
passes the periodical on to the next individual on the list.
Texaco indicates that systematic copying from these periodicals
for an archival library may be a copyright infringement. When discussing
the actions at Texaco, the court stated, "when a corporation invites
such archival copying by circulating items likely to be worth copying
(whether articles or entire books), any distinction between individual
and institutional archiving loses all significance."16 One possible alternative for the interested
attorney is to place a note identifying the issue in a personal or
research file, and retrieve the original at the necessary time.
Attorneys sometimes copy articles to facilitate the routing process. If
this is occurring, then more subscriptions to the title may be
Another common practice of law firms is routing (via copy or scanned
image) the table of contents of an issue and then storing the issue in
the library or other central location. This storage and notification
service allows recipients to see available articles quickly while
assuring that the item is not lost or destroyed. Most people acknowledge
that a simple table of contents is factual data that is not copyright
protected. However, when a publisher enhances the table of contents with
an abstract of each article, the "added value" of that abstract may make
copying the contents page an unwise practice.
Internet. As with all other sources, downloading
material from the Internet may be an infringement. Many Web sites now
indicate if it is permissible to download, post on another Web page, or
print their articles. This practice of explaining acceptable usage of
and, as illustrated in Lowry, only include materials created by
the firm or its employees.
Duplication of materials from the Internet can take an interesting
turn. Many individuals find articles of interest online and copy them
into email messages to send to someone else. This single action may not
cause a copyright owner too much concern. But if that email subsequently
gets forwarded numerous times, the copyrighted article then has been
reproduced several times. This widespread distribution without the
owner's permission may be an infringement. Some people, as an
alternative recommended practice, email only the URL of the Web
Firms reproduce a variety of materials within the course of business.
The previous examples assist in identifying some of those items and how
customary practices may or may not be "fair use." The key, of course, is
applying the four factors found in 17 U.S.C. § 107.
Many attorneys, as a function of their employment, copy materials. As
illustrated in this article, all types of commercial enterprises are
susceptible to infringement cases. Take a minute to evaluate the use of
copies made in your firm. While these copies probably qualify as "fair
use" or are de minimus, a review of office activities may be helpful.
Reread license agreements with online vendors. Order additional
subscriptions for multiple offices or when routing lists become lengthy.
When copying an item, does it resemble the systematic, archival copying
found in Texaco? Is a copy a verbatim copy for the file, or has
it been transformed into something of value? Taking a few corrective
steps will ensure your firm is truly in compliance with copyright
is a reference librarian at Davis & Kuelthau in Milwaukee. She is
the current president of the Law Librarians Association of Wisconsin,
sponsor of a series of articles of which this article is a
1Steven D. Smit, "Make a Copy
for the File..." Copyright Infringement by Attorneys, 46 Baylor
L. Rev. 1, 26 (1994).
2American Geophysical Union v.
Texaco, 60 F.3d 913 (2d Cir. 1994).
3Id. at 915.
4Id. at 916.
5Basic Book Inc. v. Kinko's
Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).
6Campbell v. Acuff-Rose
Music, 510 U.S. 569, 579 (1994).
7Texaco, 60 F.3d at
8Id. at 924-25.
9Harper & Row Publishers v.
Nation Enters., 471 U.S. 539, 563 (1985).
10Texaco, 60 F.3d at
11Campbell, 510 U.S. at
12Harper, 471 U.S. at
13Campbell, 510 U.S. at
14Texaco, 60 F.3d at 931
15Lowry's Reports v. Legg
Mason, 302 F. Supp. 2d 455 (D. Md. 2004).
16Texaco, 60 F.3d. at