For the past several years, I have enjoyed writing the Simplest Thing Possible column. The column's goal was to introduce new and, by all accounts, useful technology in a way that makes it easy to get up and running as quickly as possible. With this article, I'm shifting my focus to our industry's legal issues. I'm also an attorney based in Philadelphia and an observation I've made over the past several years is the dearth of legal topics in technical journals. CODE Magazine, from day one, has always been a cutting-edge leader and I'm fortunate that CODE is continuing in that tradition by hosting this new column. In spite of the lack of legal coverage, as technologists, legal issues surround you whether you realize it or not. Increasingly, it�s becoming increasingly important to understand, at a basic level, the legal climate in the technology space. For example, let's say that you're writing an app that you wish to submit to an app store and there's an image on the Web that you'd like to use. Can you use that image? Specifically, do you have the legal right to use that image? What area of law covers this situation? As a technologist, whether you're an independent consultant or a corporate developer who's part of a large team, you need to be aware of the legal and business considerations that come with the choices you make.

In this inaugural installment, I'm going to cover one of the most misunderstood aspects of Copyright Law: Fair Use. The focus in this series will be on the laws as they pertain to the United States. Where necessary, I'll also highlight international law. As to fair use, it's a concept that, for the most part, is unique to the United States. Future installments will cover topics ranging from trademarks, patents, trade secrets, confidentiality, contracts, general business law as well as topical and emerging legal considerations that you read about in the news.

DISCLAIMER: This and future columns should not be construed as specific legal advice. Although I'm a lawyer, I'm not your lawyer. The column presented here is for informational purposes only. Whenever you're seeking legal advice, your best course of action is to always seek advice from an experienced attorney licensed in your jurisdiction.

Before diving into fair use, we need to visit copyright. In a later column, I will discuss core copyright concepts in detail. For now, we'll rely on the following definition:

Copyright is the exclusive right, for a limited time, that an owner has over a work that is original and fixed in such a way that is capable of being perceived by others. Works include, but are not limited to prose, paintings, sculptures, performances, software, and sound recordings. Rights include exclusivity over use, copying, and distribution of the work.

There's a lot contained within this definition, and, as previously stated, all that will be the subject of an upcoming article. The item within the definition that I want to focus on for this article are the exclusive rights to use, copy, and distribute a copyrighted work. Specifically, I'm going to focus on exceptions to the exclusivity rule. Those exceptions are codified in the Doctrine of Fair Use that I will discuss in a moment.

Why do exclusive rights for a limited time exist? Like most things in law and public policy, the answer has to do with incentives. In order to encourage creative work, whether that work is visual art, prose, or music, creators of such work need to have protectable rights to that work since, presumably, there is a financial end from the artistic means. At the same time, as the marketplace for ideas receives more and more creative work, society benefits from using the work by people other than those who created the work. At first glance, this is inconsistent with exclusivity. Exclusivity, after all, is a binary thing. You either have it or you don't. That's the wonder of the law! For every rule, there are exceptions and exceptions to the exceptions. With copyright, the exceptions to exclusivity are found in the Doctrine of Fair Use.

Doctrine of Fair Use

As the name implies, there are some uses of copyrighted material by others than those who created the work that are deemed “fair.” By fair, I mean equitable such that there is no economic or such other injury to the copyright owner when squared against the needs of society. In the previous section, I mentioned the notion of exclusivity for a limited time of copyright. In the United States, this is a bedrock principle found in the Copyrights Clause of the United States Constitution (Article I, Section 8, Clause 8) that reads:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

As it turns out, the Copyrights Clause also covers patents, given the language regarding inventors and useful arts. Squared against the exclusive rights is the notion of promotion. Courts have held that implicit in this clause is the notion of fair use. In other words, in order to promote the Progress of Science, which is what copyrights are about, others have to be able to use the work to at least some degree. Over time, these court decisions created the Doctrine of Fair Use that was codified in the US Copyright Act of 1976 (Title 17 United States Code Section 107).

There may be no more misunderstood concept in copyright than fair use. That's why I've selected the topic to kick-off this column. One understanding is that as long as you don't charge money, it's fair use. Another is that as long as you attribute ownership, it's fair use. Neither of these statements regarding fair use is true.

The Doctrine of Fair Use consists of a four-factor analysis:

  • The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
  • The nature of the copyrighted work
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • The effect of the use upon the potential market for, or value of, the copyrighted work

No one factor can be evaluated in isolation. All factors must be considered, although one factor may be afforded more weight than the other factors. Fair use analysis is a fact-intensive exercise meaning that ultimately, it's up to a fact finder, whether it is a jury or a judge, to weigh the facts such that an affirmative defense of fair use to a copyright infringement is viable.

Stanford University has a nice summary of cases that outline where fair use has either been found or not found given various facts and circumstances: http://fairuse.stanford.edu/overview/fair-use/cases/. Reading the summaries, it becomes clear that the factors are just guidelines that have been distilled from many cases. It can be quite difficult to ascertain why two cases will come out differently when the facts appear to be consistent. Sometimes, it's just a matter of looking to see where the case was decided. To illustrate, consider this example where the seventh circuit is taking the second circuit to task over its analysis of transformation as it pertains to fair use: http://www.law.com/sites/jdsupra/2014/09/22/seventh-circuit-criticizes-second-circuits-transformative-use-approach-to-fair-use/.

Now the question is: Applying these four factors, given your specific scenario, can you use somebody else's work? The answer, as you may well have guessed, is that it depends. Today, rights holders are more vigilant than ever in scouring the Web to see if their material is being used. The thing to keep in mind is that if the work is registered with the US Copyright Office and you receive a cease and desist (C&D) letter, in addition to actual damages, statutory damages can apply. The most significant statutory damages can be attorney fees and costs that can easily amount to thousands of dollars. There are a variety of factors that go to quantify the precise amount of liability one would face in an infringement action. Should you ever receive a C&D letter, it's something you shouldn't ignore. In that event, your best course of action is to consult an attorney to understand your options.

There may be no more misunderstood concept in copyright than fair use.

The following are some things to consider when confronted with the decision of whether to use another's work:

  • If you are writing an article or authoring a video, chances are that you signed a contract where you represent and warrant that the work you submit is yours. This means that you agree to indemnify the party you are writing content for.
  • Reach out to the rights holder and ask for permission. In the long run, this will save you a lot of headaches and money. It's simply not worth the risk of throwing caution to the wind hoping you don't get caught. Think of it this way, would you want somebody stealing your work? Be a good citizen. Chances are good that you can strike a good and equitable arrangement to use the content.
  • In the event that you can't use somebody else's content, what's the nature of the work? Is it just a compilation of generally known facts? Or, is it something that is the product of the author's own creative talents? This goes to the nature of the copyrighted work. If it's the former, then you can likely cite the source since these are facts in the public domain. If the latter, then you need to re-visit the previous bullet. The line between these two can often be shades of gray, rather than black and white.
  • Make strategic use of a search engine's license filtering feature. Bing and Google have the ability to filter content by license and usage rights. Note: this is not foolproof. If there's an image that appears to be in the public domain or subject to a permissive license like creative commons, you may want to verify that. If the search engine is accurate, then fair use doesn't apply since you already have the rights to use the content. If the search engine is not accurate, then your verification step was a wise move on your part!

Example

A few years ago, a Swedish man wrote a book entitled "60 Years Later: Coming Through the Rye." The book was set 60 years after the setting in J.D. Salinger's Book "Catcher In The Rye." Salinger successfully sued the publisher for copyright infringement and thus prevented the book from being sold in the US. The court held that the book was essentially a sequel to the original work. In legal terms, the new book was considered to be a derivative work. That alone was not enough for Salinger to succeed in his claim. The court also found there was no originality in the new book citing that the new work essentially was a direct copy of Salinger's style and of the central character Holden Caulfield. Just setting the new book 60 years later was found to not be original or, in legal terms, transformative enough to have fair use apply. You can find a copy of the actual complaint here: http://online.wsj.com/public/resources/documents/salingersuit.pdf.

When fair use is discussed, the notions of parody and satire come to mind. We see parody and satire all of the time when it comes to either discussing or criticizing a work. To qualify as a parody or satire, there has to be a certain amount of transformation over the original work. In other words, how much originality did the new author bring to the table? Also, how much of the original work is being discussed or critiqued? In the Salinger case, the new book was essentially a sequel to the original work without any originality over and above the original work. It's the kind of sequel that Salinger could have written and that's what copyright was designed to protect.

An example of where parody was found such that fair use applied is with the book “The Wind Done Gone:” (http://en.wikipedia.org/wiki/The_Wind_Done_Gone). The decision of the court in that case is summarized here: http://en.wikipedia.org/wiki/Suntrust_v._Houghton_Mifflin. The Suntrust case cites the famous case of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). This is the 2 Live Crew case, which held that a commercial parody can also qualify as fair use under section 107 of the Copyright Act. Remember the one myth I cited earlier about how it is often said that as long as money isn't involved, it's fair use? The 2 Live Crew case is a clear example showing how wrong that myth is!

How similar or dissimilar is one work from another? Ultimately, it boils down to a subjective evaluation of the facts. Unless and until something is litigated and a decision is rendered on those facts, it can be difficult to know for sure how a case will turn out. Most often, fair use cases are settled privately. Going to trial and getting a verdict is by far the exception, not the rule. The fact is, a large company with infinite legal resources has a decided advantage when it comes to rights enforcement. This also demonstrates why you need to be extremely mindful of whether or not you have the rights to use what you are seeking to use.

In the News: Oracle v. Google

There's interesting litigation between Google and Oracle Corporation over the Java Programming Language: http://www.skadden.com/insights/federal-circuit-overturns-emoracle-v-googleem-and-potentially-widens-debate-over-copyright-. This is commonly known as the “API Copyright” case. The decision in the Northern District of California held:

So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API. It does not matter that the declaration or method header lines are identical.

In other words, we are free to carry out the same operations so long as we write our own code within the body of a function. The holding excluded the function structure, names, and signatures. This makes sense given that it would be common for different organizations to have a function named getOrder or getCustomer. The district court made those exclusions under the notion that they represented a system or method of operation that is statutorily excluded from being copyrightable. The US Federal Circuit Court of Appeals reversed the core holding of the district court. In other words, the appellate court held that the district court got it wrong on what it excluded as copyrightable. The significance of this holding cannot be overstated. The idea that the mere structure of a function is copyrightable has received a good amount of criticism for good reason.

This Oracle/Google matter is far from over. The case was remanded back to the district court on the fair use issue. We'll have to wait to see if the Supreme Court decides to hear the case. In the meantime, the Supreme Court has asked the Solicitor General of the United States to submit a brief that would outline the Federal Government's position on this case. In my opinion, the district court struck the right balance between copyrightable and non-copyrightable matter. The Federal Circuit, with its decision, has set a dangerous precedent such that copyright has impermissibly encroached into the realm of patents. Hopefully, the Department of Justice will support the District Court's decision

I will keep tabs on this case given the ramifications it has for our industry.