Copyright Basics: The Fair Use Doctrine

While browsing through YouTube videos I often find some of my favorite songs mashed up with video clips from movies, animations, and video games. Inevitably these videos are removed after receiving a take-down notice from Google for violating the terms of service. Of course, these mash-ups are blatantly infringing on the copyright holders works and should be taken down. One thing I notice on these mash-ups is a copyright disclaimer saying the presentation of the video is fair use and the user is claiming no rights in the intellectual property and does not own any of the copyrights associated with the works. While that is very kind of them to admit, it does not somehow insulate them from a possible infringement action. This brings us to the subject of the day, fair use. This is probably one of the murkiest and most litigated areas of the act so I will attempt to clear up the basic idea.

Fair use is nested in § 107 of the Copyright Act which outlines the general idea of fair use.[1] It states fair use includes reproduction in copies or phonorecords or by any other means…for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. The act clearly states that if you are using a copyrighted work for the aforementioned purposes it “is not an infringement of a copyright”. This is subject to several limitations, which the act takes into consideration to determine if normally infringing activity is “fair use”. These factors are:

(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.

As with any law, the statutory language is quite broad and open to interpretation. The courts have held that a fair use analysis must be done on a case by case basis and does cannot be simplified with a set of bright-line rules.[2] In Campbell vs. Acuff-Rose Music, Inc. the court reasoned the fair use doctrine “permits [and requires] courts to avoid a rigid application of the copyright statutes when, on occasion, it would stifle the very creativity that the law is designed to foster.”[3] This case provides the best analysis for the fair use doctrine because it allows for uses beyond the rigid statutory language and articulates the benefits for creating a transformative work which promotes the central purpose of the copyright act; promoting science and the useful arts. This allowed for the creation of a parody based on a previous work that the court determined was a non-infringing use, even though the strict reading of the statutes seems to show a parody wouldn’t really be a “fair use” because it is not criticism, comment, news reporting or any other factor listed in § 107. Nonetheless we have works such as Weird Al, Space Balls, and are modern transformative works such as “Girl Talk”.

So what we know from cases is the rules are not rigidly applied and allow room for some creativity and transformative works based on § 107 factors. If you are working on something and wondering if it is fair use consider the factors in § 107 and the court’s interpretation of Campbell vs Acuff-Rose Music. If you are using the work for the purposes enumerated within the act you will probably be fine, however, if you are using the work to create a mash-up of your favorite movie clips to your favorite song; you’re probably going to get a take-down notice from Google.


As with any post this is not legal advice and if you have a copyright issue please contact an attorney.



[1] 17 U.S.C. § 107

[2] Campbell vs. Acuff-Rose Music, 510 U.S. 569 (1994)

[3] Id at 577


First Circuit Court of Appeals Upholds 675,000 Judgment in Lawsuit for Illegal Downloading

The First Circuit Court of Appeals has upheld the damages against Joel Tennebaum, a former Boston University Student, in the amount of $675,000. This is stark reminder to all who think that their illegal downloading will go unnoticed by record companies and other copyright holders. While I do agree that the ruling is reasonable and well-grounded in copyright law I do not agree with the First Circuit when the judges ruled that the penalty is not; “so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.”

Joel Tennebaum was like many college students in the early 2000s, he downloaded music and shared it via peer to peer networks. Many of our friends did the same but Joel was unfortunate enough to get a letter that informed him he was going to be sued. According to the facts of the case he knew this conduct was wrong, ignored warnings from his father, his college, and even a letter from the recording companies. Joel nonetheless continued the activity. When faced with a lawsuit from Sony Joel lied about his activities by blaming burglars and a foster child living at his parent’s house for the activity. In the previous court ruling the jury found Joel’s activity willful. In determining the original damages the court said the jury must consider to following factors;

“the nature of the infringement; the defendant’s purpose and intent; the profit that the defendant reaped…the expense the defendant saved, the revenue lost by the plaintiff…the value of the copyright; the duration of the infringement; the defendant’s continuation of infringement after notice of the copyright claims; and the need to deter…other potential infringers.” Sony BMG Music Entertainment v. Joel Tennebaum No. 12-2146 (2013).

The jury awarded $675,000 which was later reduced to $67,000, Sony appealed that reduction and the court of appeals vacated the judgment and remanded to the trial court with instructions to rely on St. Louis, I.M. & S. Ry. Co. v Williams, 251 U.S. 63 (1919) in determining an award of statutory damages. Based on Williams, the original award of damages was reinstated.

Joel Tennebaum asserted the damages were unconstitutional and violated his due process rights, which brings us to the current case. The court of appeals was tasked with answering two questions. First, “[w]hat is the correct standard for evaluating the constitutionality of an award of statutory damages under the Copyright Act? Second, did the award of $675,000 violate Tennebaum’s right to due process?”  Sony BMG Music Entertainment v. Joel Tennebaum No. 12-2146 (2013).

In answering the first question the court decided that Williams is the appropriate standard for determining statutory damages under the Copyright Act. Williams, a decision nearly as old as my grandpa that remembers dirt roads in Minneapolis and when cars became “popular”, held that statutory damages only violate due process “where the penalty prescribed is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable.” Williams at 66-77.

The second question was more fact specific and examined the purpose of damages under the Copyright Act. Apparently the advent of new technology enabled people to easily steal copyrighted works and congress thought it could lead to the loss of the value of copyrights, reduced income and profits, and job losses. The court continued and asserted that Tennebaum’s actions were egregious. His conduct carried on despite “numerous warnings” and he denied responsibility for making thousands of songs available via peer to peer networks. Therefore the court ruled that damages $675,000 did not violate his constitutional rights. Tennebaum argued that Sony suffered no more than $450 in damages. Williams, however, does not rely on calculating actual damages suffered by a party in the context of statutory damages because the damages are meant to be a punishment for the violation of public law and therefore the amount may be adjusted to address the public wrong rather than redress the private injury suffered by the plaintiff.


Does this same fair to anyone else? Could this be reasonable application of damages when the Williams standard holds that due process is violated where the penalty is so severe and oppressive as to be wholly disproportioned to the offense and obviously unreasonable?

True, Joel did infringe on the copyright and Joel did distribute the songs via peer to peer networks, ignored warnings, and knew it was wrong. He did this in a time when copyright law was unsure how to treat these peer to peer networks in terms of contributory infringement and other areas of the Copyright Act.  Do these damages deter others from infringing? Has the industry lost millions of dollars because of it? Did hundreds of people lose their jobs in the music industry due to peer to peer sharing? I haven’t seen news of that and I do not think that is the case.

Protecting Intellectual Property is important, what Joel did is wrong. However, I was taught two wrongs don’t make a right and by the first circuit holding that these damages were not severe, oppressive, and disproportionate to the offense is pretty unreasonable in my eyes. Although I do have less sympathy for Tennebaum after I learned he tried to blame a foster kid living at his parent’s house.

Let’s wait to see what happens with this becase Thomas-Rasset, 692 F.3d 899, is awaiting to be heard before the Supreme Court, well that is if the court says it will hear it, of course.

Full Opinion


Top Trademark and Copyright Stories from Around the Web

Here are your Top IP Stories from around the web for the week of June 24, 2013


Brooks Brothers drops trademark lawsuit against small home-based business “Bubble’s by Brooks”. An incident of trademark bullying and local lawyers helping small business. Full Story.

U.S. District Judge Joan Ericksen reopens copyright cases after incidents of fraud revealed in the Copyright Pornography troll saga.  Full Story

Sweet battle in the trademark world as Wendy’s attacks United Dairy Farmers for use of “Frosty” trademark. Now I want a frosty. Full Story

Excellent article highlights the important of Trademark registration for small businesses and start-ups. Full Story

Trademark licensing issues are highlighted in Trademark dispute between Gibson Guitars and Viacom. Sponge Bob Ukulele looks remarkably like flying V Guitar. Full Story sues Pharrell Williams’ for using “i am OTHER” claiming infringement for the use of “I AM” trademark. Since 2006 has owned the “I AM” mark. Full story

An examination of the effect of the DOMA ruling on copyright law; gay couples will now enjoy the full benefit of copyright statutory succession and renewal rights. Full Story

Artist Roger Dean seeks $50 million in damages against James Cameron and 20th Century Fox claiming the filmmaker infringed on his copyright by using his characters and art in the film “Avatar”. Full Story

Copyright Basics: The Exclusive Rights of Copyright Holders

Copyright law can be confusing. As my last post focused what material is subject to copyright I wanted to focus this post on the next basic concept: The exclusive rights in copyrighted works.

The rights of copyright holders are outlined in 17 §106 and subject to restrictions laid out in §§ 107-122. Because these posts are meant to be short I will not dive deeply into the restrictions, suffice to say they are filled with nuisances that could fill several copyright textbooks.

Copyright holders have the exclusive rights as outline below

1. The reproduction Right

The reproduction right is the right of the author to make copies of his or her work. Thus the owner of a copyright is the only one authorized to make copies of the work and the right is violated when someone other than the holder of the copyright creates a copy of the work. There are certain situations where the statute allows “unauthorized” copying of work such as in the case of libraries making copies for archival purposes, home video recording, and, more recently, recording of copies onto a home DVR device.

2. The right to prepare derivative works

A “derivative work” is another work which is based on a preexisting work. These can be a “musical arrangement, dramatization, fictionalization, motion picture” or other forms of the original work.  Essentially it means that any work which is based on the original that in itself an original work of authorship. It gives the copyright holder the exclusive right to create new works based on the original. Therefore, making a movie version of a book is an excellent example. The copyright in the derivative work in no way extends or enlarges the “scope, duration, ownership, or subsistence of copyright protection in the preexisting material”. Additionally, the copyright in a derivative work extends only to the material “contributed by the author of such work, as distinguished from the preexisting material employed in the work”. Creating a derivative work does not give the author any right in the material on such the derivative work is based.

This means that only the copyright holder is authorized to make derivative works and anyone who wishes to create such work must obtain the appropriate rights from the author in order to do so.

3. The distribution right

The distribution right can be described as the right of the author of a work to distribute to the public copies of work “by sale or other transfer of ownership, or by rental, lease, or lending.” This means that only the copyright holder has the right to sell or distribute their work. This is an area that sees a lot of action these days as lawsuits involving torrent sites and file sharing often assert that this  right violated by hosting the files or allowing others to download them via torrent programs. Therefore, you do not have the right to share music through computer systems as this it can result in some pretty huge lawsuits.

4. The public performance right

This right applies, as indicated by §106, in the case of “literary, musical, dramatic, and choreographic works, and pantomimes, and motion pictures and other audiovisual work”.

For this right to be infringed the work has to be “performed” and it has to be to the “public”. The statute doesn’t define performance but it is not limited to someone standing there and singing a song or preforming a play; it also can apply to playing music in a café.  Performing a work publically means to “perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family is gathered.

Really this just means that the copyright holder has the exclusive right to perform the work or authorize the performance of the work publically; if someone wants to play music at their bar or restaurant they have to obtain these rights and pay royalties to a performing rights society such as the American Society of Composers, Authors and Publishers (ASCAP), and Broadcast Music, Inc. (BMI).

5. The right to display the work publically

This right applies in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or…sculptural works.” This right also applies to individual images of motion picture or other A/V work.  §101 defines displaying a work as showing “a copy of it, either directly or by means of a film, slide, television image, or any other device or process…”

This right is quite similar to the public performance right. That is, the holder of the copyright has the exclusive right to display the work except as limited in §109 and the first sale doctrine

I have decided not to include two rights listed under § 106, the right to perform work by means of digital audio transmission and the right of attribution and integrity. I did this not only for the sake of length but also because the digital performance right is exceedingly complicated by §114 of the act. The right of attribution and integrity, also known as the moral rights, are infrequently enforced and only a part of the copyright act because of the provisions of the Berne convention, most likely I will return to “moral rights” in a subsequent post.

As always, this information is not legal advice. Should you have a legal issue related to copyright please contact an attorney.

Last Week’s IP roundup:

Prenda Lawyers continue to have problems as Judge Otis Wright attempts to have them explain their actions, but Prenda lawyers plead the Fifth. John Steele is said to have sued from than 20,000 people and made millions from pornography copyright lawsuits. Full Story

ISOhunt’s founder, Gary Fung, demands a jury trial after the Motion Picture Industry of America automatically wins a case on the merits in the 9th Circuit Court of Appeals. ISOhunt is a popular torrent site; Fung faces up to $150,000 per infringement. Fung claims liability will chill free speech and ruling is a miscarriage of justice. Full Story

Microsoft and Fox agree to share the “Killer Instinct” Trademark as long as they promise not to move into each other’s territory in using the mark. Microsoft is the owner of the Killer Instinct mark as used on video games; Fox registered a mark for a TV show under the same name. Full Story

As we see more retro car designs entering the market, Chevrolet applies for a trademark on Chevelle sparking questions of whether the automaker plans to remake its classic muscle car. Full Story

More IP problems for Facebook as it faces a Trademark battle for use of “Timeline”. As it turns out, another social media company used the same name on a website which catalogs a user’s history of events as posted on social media. registered their mark in 2010, Judge rejects facebook’s claim that is term is too generic as facebook has claimed use of “like” is not generic. Full Story

DC claims copyright in its Official Code, public domain advocates deliver special package to ThinkProgress. Currently there is no way to digitally download the code unless a person has a subscription to Lexisnexus. Full Story

Why are CD and tapes are better than digital copies? First Sale Doctrine takes a hit as a Judge rules that reselling digital copies is Copyright Infringement. Full Story