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    March
    31
    2008

    Practice Tips

    Bev Butula

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    Unbridled reproduction of copyright protected works can land your firm in detention. Unless, of course, you've got a "fair use" hall pass.

    Wisconsin Lawyer
    Vol. 78, No. 4, April 2005

    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 pass.

    by Bev Butula

    copy machineAttorneys 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.

    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 cost."1

    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 entertain.

    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 circumstances.

    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 important articles.

    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 protective purposes."10

    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 duplicated.

    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 copyright."13

    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 Clearance Center.)

    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 acceptable.

    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 necessary.

    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 Web page materials is important. Firm Web pages should post terms of use 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 page.

    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.

    Conclusion

    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 laws.

    Bev Butula 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 part.

    Endnotes

    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 923.

    8Id. at 924-25.

    9Harper & Row Publishers v. Nation Enters., 471 U.S. 539, 563 (1985).

    10Texaco, 60 F.3d at 925.

    11Campbell, 510 U.S. at 587.

    12Harper, 471 U.S. at 566.

    13Campbell, 510 U.S. at 578.

    14Texaco, 60 F.3d at 931 (emphasis added).

    15Lowry's Reports v. Legg Mason, 302 F. Supp. 2d 455 (D. Md. 2004).

    16Texaco, 60 F.3d. at 924.