August 24, 2004  ·  Richard Posner

Here is a very worrisome problem concerning fair use. It has to do with a dichotomy long noted by legal thinkers between the law on the books and the law in action. They often diverge. And fair use is an example of this divergence. As I said in an earlier posting, fair use often benefits rather than harms the copyright holder. However, it doesn’t always; moreover, even if a copyright holder is not going to lose, and is even going to gain, sales from a degree of unlicensed copying, if he thinks he can extract a license fee, he’ll want to claim that the copying is not fair use; and finally, because the doctrine has vague contours, copyright owners are inclined to interpret it very narrowly, lest it expand by increments.

The result is a systematic overclaiming of copyright, resulting in a misunderstanding of copyright’s breadth. Look at the copyright page in virtually any book, or the copyright notice at the beginning of a DVD or VHS film recording. The notice will almost always state that no part of the work can be reproduced without the publisher’s (or movie studio’s) permission. This is a flat denial of fair use. The reader or viewer who thumbs his nose at the copyright notice risks receiving a threatening letter from the copyright owner. He doesn’t know whether he will be sued, and because the fair use doctrine is vague, he may not be altogether confident about the outcome of the suit.

The would-be fair user is likely to be an author, movie director, etc. and he will find that his publisher or studio is a strict copyright policeman. That is, since a publisher worries about expansive fair uses of the books he publishes, he doesn’t want to encourage such uses by permitting his own authors to copy from other publishers’ works. So you have a whole “law in action” law invented by publishers, including ridiculous rules such as that any quotation of more than two lines of a poem requires a copyright license.

Here’s a reductio ad absurdum of folding in the face of copyright overclaiming: �While interviewing students for a documentary about inner-city schools, a filmmaker accidentally captures a television playing in the background, in which you can just make out three seconds of an episode of �The Little Rascals.’ He can�t include the interview in his film unless he gets permission from the copyright holder to use the three seconds of TV footage. After dozens of phone calls to The Hal Roach Studios, he is passed along to a company lawyer who tells him that he can include the fleeting glimpse of Alfalfa in his nonprofit film, but only if he�s willing to pay $25,000. He can�t, and so he cuts the entire scene.� Jeffrey Rosen, �Mouse Trap: Disney�s Copyright Conquest,� New Republic, Oct. 28, 2002, p. 12 (emphasis added). Clearly, copying the three-second “fleeting glimpse” was fair use, but who knows how the studio would have responded if the filmmaker hadn’t cut the scene?

What to do about such abuses of copyright? One possibility, which I raised hypothetically in my opinion in WIREdata, pp. 11-12, is to deem copyright overclaiming a form of copyright misuse, which could result in forfeiture of the copyright. For a fuller discussion, see the very interesting paper by Kathryn Judge, not available online but obtainable by emailing her at kjudge@stanfordalumni.org.

The underlying problems are two: the asymmetry in stakes in disputes between owners of valuable copyrights and people who are either public domain publishers or don’t anticipate that the works they’re creating will have great commercial value; and the vagueness of the fair-use docrine. I have suggested that this vagueness can be reduced by a categorical approach, under which types of use are given essentially blanket protection from claims of copyright infringement. If only one could define “glimpse”!

  • http://www.xanga.com/publicdomain WJM

    Look at the copyright page in virtually any book, or the copyright notice at the beginning of a DVD or VHS film recording. … The reader or viewer who thumbs his nose at the copyright notice risks receiving a threatening letter from the copyright owner. He doesn�t know whether he will be sued, and because the fair use doctrine is vague, he may not be altogether confident about the outcome of the suit.

    I think part of the problem here might be that the IP law industry, and many of those in it, got its feet wet practicing trademark law, and carried a lot of those practices over to the copyright side of the industry as it grew in importance.

    I have had people, both in the legal and “cultural” communities, who simply will not believe that a copyright can’t be eroded or diluted in the same way that a trademark can.

    (There was just the other day in the Globe and Mail a long article on the lengths to which the IOC and COC go to enforce their Olympic “copyrights”, when it was clear from the context of the story that it was mainly about trademark enforcement.)

  • raoul

    �One possibility, which I raised hypothetically in my opinion in WIREdata, pp. 11-12, is to deem copyright overclaiming a form of copyright misuse, which could result in forfeiture of the copyright.�

    Excellent idea.

    What about the possibility of removing the ridiculously high statutory damage provisions? If the copyright holders had to actually prove damages then they would be less likely to sue, or even threaten to sue, over such frivolous claims as the one found in the Three Stooges example. If it were not for the objectively extreme statutory damages provisions, many of the innocent defendants caught in the RIAA dragnet would at the very least hold the record companies to their burden.

  • Anonymous

    Judge Posner,

    I agree with the line of reasoning that finds intentional overclaiming to be considered misuse. Expanding on that line of reasoning, what is the likelyhood that a charge of barratry would ever succeed against an overly zealous/litigious copy right holder? Since fair use is ‘codified’ can’t copy right holders be expected to accept some degree of the practice?

    Some of the burden of this ‘right’ needs to be shifted before it can be truly called a right at all. As Professor Lessig has repeatedly said, until the right of fair use amounts to anything more than the right to pay a lawyer, there’s really no practical right to fair use…

    -kd

  • Robert Young

    Judge Posner,

    Your observation that there is “a dichotomy…. between law on the books and law in action” is interesting simply because it’s a phrase that can cut both ways. For instance, the rightsholders would use the same phrase to emphasize that the problem is not so much an issue of *defending* fair use, but rather that there is *too much* fair use… to the point of being unlawful under today’s laws… and by claiming that there is in fact a _lack_ of “law in action” vis a vis enforcement. As they have, the rightsholders would then have to merely point to the enormous amount of filesharing on p2p networks, where citizens are not simply sampling works but trading them wholesale… clearly outside the fair use doctrine and law. But as you have advocated, the law needs to be modernized and it will be interesting to see who wins… 60+ million people (crossing the boundaries of all nation-states) or a handful of concentrated media conglomerates with unprecented political influence. With enforceability a big question mark, I’m not sure this is a David and Goliath battle either… could end up being the digital equivalent of a coup d’etat! But as in any revolution, what’s next?

    As Tim Wu has suggested, it could end up in a negotiated settlement via Congress. Or, perhaps even more realistic is the possibility that whatever copyright law becomes, the solution will indeed be “negotiated”, but this time (because of technology itself) it will result in a government-back DRM doctrine where digital rights of use will actually be encoded into all media. BTW, I’m assuming the negotiations part presumes that private contract cannot conflict with law. Judge, is this a practical outcome?

  • Rolo Timassie

    These concerns are often portrayed as somehow unique to copyright, but in fact they have nothing in particular to do with copyright. Lots of forms are over-reaching. Take a look at your ski lift pass next time you go skiing. It probably disclaims liability even for intentional torts. Every lawyer writing a cease & desist letter will always claim the utmost he or she can, knowing that some of it may be bargained away later. Some will even go further than the law extends, gambling on ignorance. Many property owners are reasonable; some are not (and woe unto you if they are your neighbors). The difficulty is not with copyrights, it’s with a society based on the rule of law in which the law is arcane and good lawyers are expensive. A change in the copyright law will not fix that.

  • Anonymous

    Dear Judge Posner,
    US Trade Representatives have not been very keen on allowing other countries to adopt a defence of fair use.

    Most notably, the US-Australia Free Trade Agreement provides for a range of measures designed to boost the position of copyright owners. However, the Agreement fails to adopt features of US law that favour users – such as originality or a defence of fair use.

    As a consequence, the Australian law does not recognise that users can employ a copyright work for transformative purposes, time-shifting or space-shifting, or reverse engineering.

    The Australian Digital Alliance has been campaigning to recognise a defence of fair use in Australia. See the press release that they have just put out on the subject.

    23 August 2004

    Fair Use Left Out of Trade Agreement: Government Action Requested Urgently

    The Australian Digital Alliance (ADA) and the Australian Libraries Copyright Committee today called on the Government to urgently amend the Copyright Act 1968 (Cth) to recognise an open ended defence of fair use.

    The ADA and ALCC stated that such reforms are necessary in light of the deleterious impact of the US Free Trade Agreement Implementation Act 2004 (Cth) upon libraries, universities, cultural institutions, and software developers.

    Whilst the Government outlined the benefits of harmonisation of intellectual property laws between Australia and the US throughout AUSFTA negotiations, the ADA and ALCC stated their concerns and disappointment that harmonisation has not been effected across the board in the implementation bill, but only selectively, at the expense of users of copyrighted material.

    A broader fair use style doctrine, such as exists in the US in order to balance the strong owner-protective provisions of the US Copyright legislation, has not been incorporated into Australian law. The law in relation to copyright which is currently scheduled to take effect on or about January 2005, harmonises only those aspects of US law which favour copyright owners.

    Rather than aligning the US and Australian copyright law through the harmonisation process, the result with respect to fair use provisions will put Australians at a significant disadvantage to US citizens.

    The detrimental consequences of this will be felt broadly amongst educational, consumer, cultural and research institutions. Without expansion of the fair dealing provisions to balance the stronger copyright owner rights, institutions functioning for the benefit of the public, will bear the burden of a longer copyright term, more stringent copyright owner rights, and tougher penalties for incidental, minor and non-commercial breaches of Copyright. This will expose institutions to greater costs and greater risks. Ultimately this will adversely affect the end users of these institutions, who will not be able to access the same level of knowledge via copyrighted material.

    The ADA and ALCC endorsed recommendations of the Copyright Law Review Committee, the Joint Standing Committee on Treaties, and the Senate Select Committee on the AUSFTA, saying that “without appropriate amendments, the changes envisaged by the FTA will tip the copyright balance unacceptably in favour of copyright owners “. All three Committees have at various times called for implementation of broader protective legislation for copyright users, both prior to and in response to the AUSFTA.

    The Implementation Bill has now passed through the Senate, and amendments which extend the rights of copyright owners may be enshrined in law as early as January 2005.

    This submission is made on behalf of the Australian Libraries’ Copyright Committee (ALCC) and the Australian Digital Alliance (ADA). The ADA is a coalition of public and private sector interests formed to promote balanced copyright law. ADA members include universities, software companies, libraries, schools, museums, galleries and individuals. The ALCC is a cross-sectoral committee formed to consider the impact of copyright law reform on Australian libraries The ADA and the ALCC are united by the idea that copyright law must balance a fair return to creators with a reasonable level of access to knowledge for the public.

    The Submission to Government can be found on the ADA (www.digital.org.au) and ALCC (www.digital.org.au/alcc) websites.

  • Warwick A Rothnie

    First, let me applaud the highlighting of the difference between the law as written and the what goes on in practice. This gulf – and the incentives for copyright owners to exploit it – was one of the reasons the Australian Copyright Law Review Committee invoked to recommend that all contractual provisions seeking to qualify or revoke our equivalent of “fair use” be rendered null and void. (See the Copyright and Contract Report at ).

    The recommendation is a partial solution only. We already have such a provision for reverse engineering computer programs for interoperability purposes (Copyright Act 1968 s 47H). But time and again one sees software licences prepared in Australia which seek to prohibit this.

    The vagueness of the US fair use defence, assuming it is compliant with the TRIPS Agreement, is both its weakness and its greatest strength, particularly in a field developing so quickly as information technology. There are two reasons for this.

    First, for example, the Australian law is derived from English law. In 1911, England moved from a fair use defence to specific, explicit fair dealing defences for four enumerated purposes. No change in the law was intended, however, the specific statutory defences quickly became narrow silos and all flexibility was lost.

    Secondly, it is simply not possible to anticipate in a statute all the situations that should qualify as fair use, let alone do so in a workable manner under the pressure of lobbying from copyright owners. Like the European Union, we had to introduce a specific statutory provision to allow the reverse engineering justified in Sega v Connectix (9th Cir 2000). Within 2 years of its enactment, however, it was demonstrated to be unworkable. It underwent heavy statutory amendment, but the new regime provided in Copyright Act s 47D seems to bear little relation to how the real works.

    In principle, therefore, a call for a doctrine of copyright misuse seems more than timely. Would it be consistent with the TRIPS Agreement?

  • three blind mice

    judge posner, please:

    “While interviewing students for a documentary about inner-city schools, a filmmaker accidentally captures a television playing in the background, in which you can just make out three seconds of an episode of �The Little Rascals.� He can�t include the interview in his film unless he gets permission from the copyright holder to use the three seconds of TV footage.”

    What to do about such abuses of copyright?

    well, first of all you could put them in perspective.

    you are presenting this as some sort of unreasonable, or insurrmountable hurdle, when it is simply one more an annoyance in a world full of annoyances.

    what if the three second clip in the background contained a non-union actor, or a copyrighted advertisement for cigarettes or strong spirits (not allowed to be shown on TV in the US – and the network never gives away free advertising!), a non-copyrighted swastika (not allowed to be shown on TV in Germany), an offensive anti-gay slogan, janet jackson’s boob, an anti-bush slogan (another boob), or any other item of information that would cause the broadcaster headaches or conflict with their sensibilities?

    c’mon man, copyright is but one production concern of many, hardly the most significant, and yet it is continually portrayed in this forum as a huge deterrent to innovation and expression.

    frankly, it would have been trivial for the filmmaker to blur out the TV screen showing the little rascals in the background. problem solved. now where is that guy’s ASCAP membership number… or we’ll have to blur him out too.

    certainly, sir, you can come up with a better example that reflects the true tyranny of copyright as you preceive it.

    where are those weapons of mass destruction?

  • http://www.farceswannamo.com David B. Woycechowsky

    I thought occured to me as I read your glimpse-of-the-rascals. What about the argument that the glimpse of the Rascals can’t be protected because it is not expressive, not a “writing?”

    Not-a-writing in that the Rascals use may be too quick and too much in the background to register as expression, independent of the rest of the interview backdrop, for a reasonable interview viewer. Even if you did crop out the non-Rascals portions of the interview scene and frame-by-frame played it, there might simply not be enough of the work to communicate a meaningful quantum of expression. (cf, some designs for mass mailing envelopes have expression and some don’t).

    Although this approach wouldn’t solve all fair use type problems, it would: (1) give “fair users” a Constitutional argument; and (2) help distinguish glimpse type fair use from less incidental types (eg, music sampling, book review quotes, parodies). Factor (2) might be helpful in drawing meaningful categories from a legal economics perspective.

  • http://www.mcluhan.utoronto.ca/blogger Mark Federman

    The law as written vs. the law as practiced becomes an issue for the judges, some of whom do not seem to be as thoughtful as Judge Posner. I ran squarely into the publisher’s dilemma, when what should have been “fair dealing” (I’m in Canada; we spell things differently in our neighbourhood) ended up with a dealing that was anything but fair thanks to the relatively inexpensive cease and desist letter from the estate of the person whom I was quoting. As someone from my publisher explained to me, even if we were to go to court and win the case, the cost would far exceed the expected return on the book, and hence would simply be bad business.

    The significant risk imbalance between complainant and alleged copyright violator renders the doctrine of fair dealing/use relatively ineffective to any but the most courageous, the wealthy, or those with literally nothing to lose. This is the area in which judges could begin to tip the scales back towards balance, which is, as I understand it, the philosophical underpinnings of both copyright and patent law.

    To get the book published, I effectively had to cede almost all future royalties (and most of the advance) to the estate in question. Good thing I wasn’t counting on book sales to actually pay for anything.

  • Brian Esler

    While categorically exempting certain uses is initially appealing, the British experience should give pause for thought. In Britain, only those narrow statutory exceptions denominated “fair dealing” are partially exempt (and I say partially, since often, as in the case of educational fair dealing, blanket licenses are still required). Once certain accepted uses are codified as de jure “fair,” those not given that special treatment will quickly be judicially diminished into nothingness. (By way of example, look at how quickly the “non-exclusive” 107 factors have become almost the only factors considered in fair use decisions.) Fair use’s strength, as well as its weakness, is its flexibility. Given that fair use finds some of its roots in equity, strengthening the copyright misuse defense to cover overreaching seems a more plausible way to go, and is also more likely to externalize the transaction costs to those most likely to benefit from fair use.

  • http://ernieattorney.typepad.com/ Ernie

    I’m interested in the notion that you discussed of ‘law on the books vs. law in action’ and I would appreciate, and others might as well, some references to works that discuss this notion. As a practicing lawyer, and as one who is interested in the increasing force that technology is exerting on society and its norms, it strikes me that this notion is becoming increasingly relevant.

    Law works best, its seems to me, when it is applied to a slow moving target. If the law applicable to a particular social problem evolves across generations of human development then you have time for people to analyze the problem and to accept the consensus that emerges.

    When law has to deal with a fast moving target, which the increasing pace of scientific and technological developments is now producing, the inevitable errors and misunderstanding that the legal system produces are even more devastating. If the legal system looks inefficient when it deals with well-worn types of problems (criminal trials, divorce proceedings etc.), it appears completely impaired when it is confronted with the onslaught of problems created by new technologies and scientific methods (e.g. digital information, or genetic research).

    So I would like to read more about what these thinkers you mentioned have to say about the divergence between ‘law on the books and law in action,’ especially if any of them address this in the context of technological developments.

  • http://www.jmls.edu Howard Knopf

    Dear Judge Posner:

    Canada has: a �fair dealing� rather than �fair use� doctrine, which supposedly consists of some apparently closed end and tightly defined �exceptions� to infringement.

    Some are palpably trivial or even silly, such as �to make a manual reproduction of a work onto a dry-erase board�. What if the black board is then erased with a wet cloth?

    Notwithstanding these tightly defined exceptions, the Supreme Court of Canada (�SCC�) has recently opened up the whole issue in a very user friendly way and made the hitherto apparently limited exception for �research or private study� as open ended � possibly even more so � than would be the result in the USA in some fact situations.

    They said:

    �Research” must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly constrained.

    For example, research by lawyers in the course of serving their clients – obviously not non-commercial activity � is now clearly fair dealing in Canada. This may even allow for the copying of entire academic articles and cases, for example,

    See:

    http://www.lexum.umontreal.ca/csc-scc/en/pub/2004/vol1/html/2004scr1_0339.html

    NB – 51, 56

    As a result of this decision, few if any Canadian law firms or other research intensive businesses will see any need to take out licenses from a copyright �collective� in respect of normal research activity.

    The SCC may have found a really good balance between the American and Canadian concepts.

    The Canadian system also suffers from the ill-conceived notion of �commercially available� exceptions to the already limited exceptions, which effectively make several of the fair dealing and the ephemeral recording exceptions nugatory whenever a collective steps up the plate and offers to license certain activities.

    As result of this legislative approach (and some direct and indirect Government subsidies), there are probably now more collectives in Canada than in other country as a result. The principal beneficiaries to date of this approach to fair dealing are lawyers and administrators of the collectives. The costs in terms of opposing the tariffs sought by these collectives are horrendous and the payouts to actual creator are relatively minuscule or non-existent. Despite the economic inefficiency, this proliferation of collective activity continues � since the single purpose collectives can use their revenues to seek higher tariffs and lobby for even more friendly legislation. Their major opponents, although much larger in economic terms, also have many other issues to deal with and the collective tend to get their way.

    Hopefully, the wisdom of the SCC will percolate down and be used to advantage by users such as educators, librarians and research oriented businesses, who hopefully will not let the collectives undo this result in legislation. Hopefully, too, they will be effective in redressing some of the excesses of the legislation, such as the �commercially available� exceptions to the exceptions.

    Until that happens, the American approach may still be more efficient. For example, American educators, scholars and students probably pay much less for reprography �rights� than do Canadians and I don�t see any shortage of brilliant articles and other material worth copying being produced in the USA. In fact, the Canadian system is a serious disincentive to scholarly research and creativity because of the markedly higher costs and prevalent copyright chill instilled by certain collectives, all of which are essentially unchallenged by the academic community.

    Howard Knopf
    Professor of Law
    Director for the Center for Intellectual Property Law
    Chair of the Center for Intellectual Property Law and the Center for Information Technology and Privacy Law
    John Marshall Law School

  • http://ernieattorney.typepad.com/ Ernie

    [addendum to my previous comment, above] I’m familiar with the ‘Legal Realism’ school and I assume that’s what you are talking about when you refer to ‘law on the books and law in action.’ I’m interested in any analysis of how law copes, or attempts to cope, with accelerating social change (e.g. Alvin Toffler type change).

  • http://dhudson.com Douglas Hudson

    Dear Judge Posner,

    I have three simple questions.

    (1) Do you have an opinion on how market power should impact the copyright misuse doctrine?

    (2) Do you have an opinion on the economic aspects of application of the copyright misuse doctrine to anti-circumvention laws or the broadcast flag mandate? (i.e. , when restrictions go substantially beyond copyright rights and/or result in signficant dead weight loss to consumers)

    (3) As technical restrictions increasingly replace traditional contractual restrictions in the copyright world, is there any effective way for a court to regulate restrictions-by-technology (when improper, such as hinted at in Assessment Technologies) other than the heavy hammer of copyright misuse doctrine or antitrust? (i.e. Can a court reasonably strike software code like it does a contractual provision?)

    Thank you again for your time and your great posts.