On October 17, 2014, the United States Court of Appeals for the Eleventh Circuit issued its decision in Cambridge University Press et al. v. Patton et al. The case is about the posting of excerpts from copyright-protected works on a university’s e-reserve and course management systems.
A Brief Background Distilling a Complex History
The publishers — Cambridge University Press, Oxford University Press and Sage Publications – discovered copies of their works posted on Georgia State University’s (“GSU”) course management sites and sued the university president, an associate provost and Board of Regents for copyright infringement. The publishers claimed that the posting of excerpts of their books and GSU’s adoption of a copyright policy that allowed GSU professors to make digital copies of excerpts of their books available to students, without payment to or permission from the copyright owner, constituted copyright infringement. GSU’s defence was that the copyright policy and the posting of book excerpts constituted “fair use” and that neither authorization from, nor payment to, the copyright owner was required.
GSU released a copyright policy that included a “Fair Use Checklist”. The checklist provided professors with criteria that purportedly weighed either for or against a finding of fair use. The idea was that professors would check each criterion that applies, and then add up the checkmarks to determine whether the factors weigh in favour of or against a finding of fair use. If more checkmarks favoured fair use, reliance on fair use was justified. Where fewer than half of the factors were checked, it was recommended that the instructor seek permission from the rightsholder.
After some procedural wrangling, the District Court considered 74 individual claims of infringement. On May 11, 2012, the District Court found that the defendants had infringed the publishers’ copyright in only five of the 74 individual claims. The U.S. Court of Appeals decision reversed the lower court decision, remanded the case back to the District Court and provided an in-depth (129 page) assessment of GSU’s fair use defense. Here are some of the highlights of the Court of Appeals decision:
Fair Use Must be Decided in Light of the Purpose of Copyright
The Court of Appeals drives home the policy reasons behind both copyright and fair use. Repeatedly throughout the decision, the court highlights the importance of ensuring that copyright law serves its intended purpose; that is, to promote the creation of new works for the public good by providing economic incentives to create while at the same time, being careful not to overly restrict the use of copyright-protected works so that authors are prevented from building off the ideas of others. The court stresses that the ultimate aim of copyright law is to stimulate artistic creativity for the general public good, and that some secondary uses will be allowed under an implied licence for fair use of the work.
Fair Use is Not a Mechanical Exercise
The District Court had undertaken an individual analysis of each of the claimed instances of infringement and held that fair use applied whenever at least three of the four factors (discussed below) favoured the defendants. The Court of Appeals found that the District Court erred when it took this arithmetic approach to assessing the fairness factors. The appellate court found that all factors are to be explored, may not be treated in isolation from one another and the results must be weighed together in light of the purposes of copyright. Again, the appellate court drives home that the purpose of copyright is critical to any fair use assessment. The appellate court indicated that some factors may weigh more heavily than others depending on the circumstances of the case — not all factors need be weighted the same. In other words, a court should decide whether a use is fair – not whether one side of a checklist has more checks than the other. The District Court had thus erred in treating the fair use factors as a simple mathematical exercise.
In the U.S., fair use has four factors:
1. The Purpose and Character of the Use, Including Whether Such Use is of a Commercial Nature or is for Non-profit Educational Purposes
The Court of Appeals stated that the inquiry includes whether the use was “transformative” and whether it is for a non-profit educational purpose. GSU’s use of the excerpts from scholarly works was not transformative: the copies were verbatim copies of portions of the original books which had merely been converted to a digital format. Similarly, GSU did not use the excerpts for anything other than the same purpose served by the publishers’ works: reading material for students in university courses. That being said, the appellate court agreed with the District Court that the non-profit and public benefit purpose of furthering the education of students was sufficiently “weighty” so that the first factor favoured a finding of fair use despite the fact that the use was non-transformative. Interestingly, the fact that the use was non-transformative strongly influenced and was closely linked to the appellate court’s findings on the fourth factor: the impact on the market for the work.
2. The Nature of the Copyrighted Work
The works at issue were scholarly works (not textbooks), typically used in upper-level undergraduate and graduate courses in niche subject areas.
The court highlighted two criteria: first, the greater the creativity, the higher the level of protection; and second, the use of an unpublished work is less likely to be fair use. The court overturned the District Court’s finding that because all of the excerpts at issue were informational and educational (and not fictional), the nature of the works favoured fair use. Some of the books contained evaluative materials, authors’ perspectives, opinions, experiences and subjective descriptions. In those cases, the District Court should have held that the second factor was neutral, or even weighed against fair use in cases that were dominated by such material. Given that the works were not fictional, the appellate court found that the second factor was of relatively little importance in this case and should not be given much weight.
3. The Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole
The Court of Appeals found that the District Court erred in finding that 10% or one-chapter of a work was fair. The appellate court emphasized that there are no bright line approaches to fair use and that hard evidentiary presumptions must be avoided. A 10% or one-chapter starting point advocated by GSU served as a “substantive safe harbour….an approach that is incompatible with the prescribed work-by-work analysis”.
4. The Effect of the Use on the Potential Market for or Value of the Copyrighted Works
The fourth fair use factor is the extent of the market harm caused by the particular actions of the defendant, and whether unrestricted and widespread conduct of the sort would result in a substantially adverse impact on the potential market. The Court of Appeals found that the question to be decided was whether GSU’s use – taking into account the damage that might occur if everybody did it — would cause substantial economic harm such that allowing it would frustrate the purposes of copyright by damaging the publishers’ incentive to publish the work.
The Court of Appeals found that the well-established system for the licensing of excerpts of copyright-protected works through the Copyright Clearance Center constituted a viable market where universities can purchase licences. The availability of a licence does not dictate a finding against fair use, but it is “sensible” that an unauthorized use should be considered more fair when there is no mechanism to pay for the use. When there is evidence that a licence is available, the appropriate assessment of the fourth factor weighs against a finding of fair use.
Because the unpaid copying was non-transformative, the defendants used the plaintiff’s works for the same purpose for which they are marketed and sold and the threat of market substitution was severe, the District Court should have given the fourth factor significantly more weight in the overall fair use assessment.
The Specially Concurring Judge Vinson
The majority decision was decided by two judges. A third judge agreed with the majority decision that the District Court erred, but felt the errors of the District Court were broader and more serious than the majority concluded, so he wrote separately to highlight some of his concerns.
Justice Vinson emphasized the importance of seeing the “big picture” when determining what constitutes fair use, stating, “So, in analyzing fair use in a given case, the court should step back a little, just as you would at an art museum, and view the work and its use in its entirety”. He stated that the defendants had the burden to demonstrate why the aggregated use in electronic form is fair use – when the exact same use in paper form is not.
Justice Vinson appears to have been troubled that GSU historically paid for copies of works incorporated in paper coursepacks, but did not pay for the same content when copied digitally. He highlighted that the case arose out of a university-wide practice to substitute paper coursepacks with digital coursepacks primarily to save money, stating that, “the “use” of a copyright protected work that had previously required the payment of a permissions fee did not all of a sudden become “fair use” just because the work is distributed via a hyperlink instead of a printing press”.
Justice Vinson agreed with the majority that educational use is an important factor to consider, but he placed more emphasis on the distinction between transformative and non-transformative uses, finding that the use displaced and substituted for coursepacks (the functional equivalent of textbooks) for which the publishers had previously been paid. In his view, the use compelled the conclusion that the first factor weighed heavily against fair use despite the fact that the user was a non-profit university. He also held that establishing market harm does not require a showing of lost profits, nor is it dependent on the availability of a digital licence. Rather, what counts is whether “some meaningful likelihood of future harm exists”. He concluded his judgment by saying, “It has been said that fair use is best and most precisely explained by the following paraphrase of the Golden Rule: “Take not from others to such an extent and in such a manner that you would be resentful if they so took from you”….If GSU or the individual defendants held copyrights for which other universities had always sought – and paid for – permission to copy and provide to students on paper, I am confident they would be “resentful” if those universities (in an effort to save money) just stopped paying the permissions fees and instead provided the same or similar materials by digital means. GSU’s use …was, in a word, unfair”.
The Take-Aways for Canada
Canadian courts may find some assistance in U.S. court decisions, although they must be scrutinized very carefully because of some fundamental differences in copyright concepts that have been adopted in U.S. copyright legislation and case law. Fair use is not the same as fair dealing. Both fair use and fair dealing remain a case-by-case analysis, based on the evidence before the court. This appellate court considered fair use in an educational setting from a holistic, economic and copyright policy perspective, concluding that non-profit educational purposes serve a public benefit that trumps a non-transformative purpose and that copying 10% or one chapter of a book is not a proper bright-line rule. The court recognized the threat of substantial market harm resulting from GSU’s copyright and fair use policy and tied its assessment back to the purposes of copyright law. Because the four fair use factors are to be weighed together, it is appropriate to take the non-profit educational or pedagogical purpose of the use into consideration when analyzing the purpose and character of the work, even when that use is non-transformative in nature; just as it is equally appropriate to consider the non-transformative purpose of the use when considering the threat of market substitution and the impact on the market. The fairness factors are an intertwined framework (as opposed to a mechanical checklist), the same facts can be considered under different factors, and the trier-of-fact must determine whether the overall use, work-by-work, is fair in light of the goals of copyright.
This is not the last we will hear of this case – it has been remanded to the District Court to decide each instance of infringement in a manner consistent with the opinion of the Court of Appeals. One may reasonably expect that the latest decision will ultimately be reviewed by the U.S. Supreme Court. Stay tuned.
Erin Finlay is General Counsel and the Director of Legal and Government Relations at Access Copyright and the principal of Finlay Law, a boutique firm specializing in copyright, arts, entertainment and cultural policy. Erin is a graduate of Queen’s Law (LLB) and the Osgoode Professional Development LLM (intellectual property specialization). The views expressed in this article are her own and do not necessarily reflect those of her clients.
 The District Court found that the publishers had established a prima facie case of infringement in only 48 instances. Those 48 instances were then subject to a fair use analysis. In the other 26 instances, the District Court found that the publishers had either failed to demonstrate ownership or the copying was de minimus.
 In Canada, we have 6 fair dealing factors (though arguably, all 6 are subsumed in the U.S.’s four fair use factors.)