All’s Fair in Love and…Hey! Wait a Minute! That’s Mine! A Brief Discussion on FAIR USE By Neil Wilkinson

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Imagine you have written a book, say, about wine, or business, or how to get your cat through college. It really makes no difference what you have written, someone can use it. But there are limits.

Your book about wine details its history, the varieties, grapes, methods, science, tasting, all sorts of things. None of the material is new really, since wine has been with us since Romans marched in legions. But you have devised a particular layout for your book, a unique format, some really interesting graphics, your own special experiences, and your insightfully acerbic brand of wit. If so, what you’ve written is yours. Period.

As soon as your individual expression hits the page, as soon as it is reduced to a tangible medium of expression, that work, whether a book on wine, a poem, a textbook, a drawing, a song, an architectural design, or any number of other things belongs to you unless, of course, you transfer some or all of the rights granted to you under the U. S. Copyright Act Section 106 that provides:

[T]he owner of copyright under this title [Title 17 United States Code Annotated] has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

You also have the right not to distribute the work, to assign it, will it, donate it, sell it, or, if you are totally frustrated, destroy it or lock it in a drawer until the times catch up with your forward thinking. Others may use the work, but in most cases they must have your permission. That permission is yours to grant as you see fit, with a few very narrow, and narrowing more every day, exceptions. If you grant the right to copy the whole work, then they may copy it. But, if you do not, any copying or other use of the work must fall under the doctrine of “fair use,” to avoid liability to you for infringement.

Just as permission is not required for works in the public domain, the same is true when the “Fair Use Doctrine” applies. Spelled out in the Copyright Act, “fair use” is intended to “Strike a balance between the needs of a public to be well informed and the rights of copyright owners to profit from their creativity…authorizing the use of copyrighted materials in certain circumstances deemed to be ‘fair’- even if the copyright owner doesn’t give permission.” Stanford University Libraries: Copyright and Fair Use. The Copyright Act specifies that “the fair use of a copyrighted work, including such use by reproduction in copies…or by any other means specified…for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.”

To determine whether the use of a work is fair, “the following factors will be considered: the purpose and character of the use…whether such use is of a 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; and the effect of the use upon the potential market for or value of the copyrighted work.”

If the use potentially affects the sales of the copied material, it is usually not fair. Suppose that someone decides to teach a wine course, and not having a text of their own they decide to use yours. The proper thing for that teacher to do is contact you or your publisher, inquire as to price and availability, take a head count of pupils, and place an order accordingly. What that instructor may not due is obtain one copy of a book, copy it dozens of times and distribute it to the students. It makes no difference whether the infringing teacher provides the materials free or whether the students are charged, without your express written authority, a very unlikely event if you have a publisher in the mix, this kind of use constitutes an infringement because it directly affects sales of the books. Each student would have purchased a book had it not been provided as described. It is also arguable that the teacher, in order to attract students to the class, used your book as inducement, that is, for commercial gain.

Uses done solely for commercial gain are piracy, the common term for a violation of the rights extended to you under the Copyright Act. If the teacher used the promise of “no textbook to buy” in order to fill his class with tuition-paying students, then the use is not a fair one under the law. The teacher is using your work for his own commercial gain, or that of his institution, and such an act constitutes infringement and is actionable in a court of law.

Fair use is also determined when the use is a transformative one, that is, your book is used to produce a new work without appropriate credit and remuneration to you, rather than making a verbatim copy. That use has a much greater likelihood of being considered fair as long as it is properly credited. Education, commentary, literary review and criticism, journalism, scholarly research, scholarship and nonprofit educational uses are much more likely to be judged fair than cases where the user is making a profit.

Libraries and educational institutions are allowed a “fair use” of copyrighted materials, but it too is limited. In a presentation at the 2002 Modern Language Association Annual Meeting, Duane Webster, Executive Director of ARL cautions that those uses, “interlibrary loans, lending for classroom or off-premises use by patrons, archives, preservation, and duplication for fair use purposes, have all been restricted, in some cases severely restricted, and in other instances barred by licensing agreements… Previously, as owner of a particular copy of a book, a library was entitled to set the terms of patron access to that copy. In the new world of libraries as licensee of a digital work subject to technological measures, the library may be denied such right.” The Practical Realities of the New Copyright Laws: A Librarian’s Perspective.

If the use is not fair, and no permission has been granted to use all or part of a work, and the work has been registered, what relief then is there against infringement? Initial and frequently-used remedies are temporary and permanent injunctions. These are orders of court directing the infringer to cease the infringing conduct. Temporary injunctions are often granted before a trial, if the copyright holder is able to show immediate actual or potential harm as a result of the infringement. A permanent injunction may be obtained as a result of a settlement or a final court action, and copyright owners can be granted the authority to impound and destroy all infringing works.

Section 504 of the Copyright Act specifies that a copyright owner can collect from an infringer actual damages, profits realized by the infringer, and statutory damages. Actual damages are exactly what they say they are, the damages actually suffered by the copyright owner as a direct result of the infringer’s actions. If the infringer makes any profit, the copyright owner can be awarded that profit. It is important to note that these damages are available to a copyright owner, whether the work is registered or not. They are intended to provide the copyright owner with misappropriated income realized by the infringing party. The problem for the copyright owner is that an infringement may not create significant losses to the copyright owner nor significant profits to the infringer to warrant the costs of a lawsuit. If all an author has available are common law actual damages and return of profits, she may spend a lot to get nothing, apart from the satisfaction of protecting her work. But, satisfaction cannot be put in a bank account. That is why it is important to register a work, and to register any subsequent versions or derivatives.

According to the Copyright Act, statutory damages, i.e., those damages set out in the Act, apply without regard to actual damages or purloined profits. This is clearly preferable to trying to predict what sales would have been or multiplying the number of copies pirated by the cover price of the book. Statutory damages begin at $750.00 per infringement and top out at $30,000.00 per and are designed to deter, punish, and remove the guess work of infringement.

Proving that the infringer acted willfully or knew his actions were violations of law and continued after so learning may result in a court raising the damages to as high as $150,000.00 per infringement. Engaging in a willful infringement solely for commercial advantage or private financial gain, or that involves works with a value of more than $1,000.00, carries criminal penalties that may include fines and terms in prison. As a final measure, a court finding that an infringement has taken place can order the infringer to pay costs and attorneys’ fees to the copyright owner, which can be quite substantial, and a boon to a struggling writer whose work has been pinched.

Court cases across the country illustrate the magnitude a copyright infringement case can achieve. Improper copying of college course material brought Kinko’s and other copying services to grief, very expensive grief. Dissemination of financial, legal, and other professional newsletters have been the subject of a number of suits, and the amounts in damages have reached millions when factoring each infringement times statutory damages. Cable companies have gone to great pains to track down and file suits against every purchaser of cable descramblers they could find, made all the easier by the fact that they used the power of the Copyright Act to raid and seize the files of the manufacturers of such devices. The unauthorized copying of computer software has been the bane of many manufacturers, businesses of every stripe, academic institutions, and even government and police departments. The Digital Millennium Copyright Act, a long and complex piece of legislation that inexplicably contains protections for boat hull designs, sets out damages and remedies for copyright infringement done in or facilitated by electronic means, including the Internet.

One final note about registration. If your work is printed and distributed by a publisher, quite likely the work will have been registered at or just prior to printing. However, if you are self-published and no arrangements have been made to register the work as part of the publishing process, you may need to do that yourself. Suppose you have printed, distributed, and sold a work that you have not registered. Things are going along swimmingly, a few dollars come in every so often as the book sells. Then one fine day you discover that the nefarious educator we talked of earlier is using copies of your work without credit, permission, or payment. Are you out of luck? Are you stuck with only actual damages that are very difficult to prove and may amount to only thirty or forty times the cover price? The answer is: It depends; upon you and how rapidly you act once you have discovered the infringement.

The Copyright Act specifies in Section 411 that:

[N]o action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title . . .
(2) makes registration for the work, if required by subsection (a), within three months after its first transmission.

and in Section 412 that:

“[N]o award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made far
(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or
(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

What all that means is that a) it is a good idea to register every work, published or unpublished, and any subsequent revisions or editions, b) but if you do not, you must register within three (3) months of your discovery of an infringement and before any action can commence that seeks to bring the real teeth of the Act to bear.

It is arguable that the copying and dissemination of your wine book is a continuing infringement, in that, every person using it or having it in their possession is in violation of the law and of your rights on a continuing basis, most especially as the class progresses. That is, the first copying is an infringement, and each subsequent use in each of the classes is arguably a single infringement as well. Let’s say then that your book has been copied for three classes that meet fifteen (15) times and each class has forty (40) students. And, you are able to prove that the infringement was done knowingly and in total disregard of the law and your rights. You don’t need an abacus to figure that the infringer courts a huge judgment if you can prove all or even part of such a claim. Before you dismiss this all as a pipe dream, understand that damages awarded by a court for an intentional act such as I have described here generally cannot be discharged in a bankruptcy proceeding, and if the infringer is in the employ of an institution such as a company, college, or university, he or she subjects his or her employer to liability to you for their infringement.

Remember though, these matters are very fact and time sensitive, so at the first hint of infringement of a registered or unregistered work, please seek the advice of an attorney familiar with intellectual property law and copyrights in particular. If you have registered the work, and you then discover an infringement, by all means consult that same attorney who can help you make the decisions necessary to protect your work and advise you on the intricacies of the law.

This article is not intended to offer legal advice, that’s what you hire your attorney to do. It is, however intended to offer some discussion on some of the more prominent intellectual property issues in the news these days.

Neil Wilkinson is a practicing attorney and holds a Master’s Degree in Professional Writing from Kennesaw State University (KSU) in Kennesaw, Georgia, and Master of Laws (LL.M.) from the University of Georgia School of Law. Neil is also an adjunct professor of Intellectual Property Law in the MBA program at the KSU Michael Coles School of Business. He has published articles in legal and general interest publications, as well as poetry and short fiction in regional publications. With two novels completed, “A Day in the Life of A Reasonable Man,” a picaresque farce involving a fussy, overly-grammatical everyman who finds himself the plaintiff in a lawsuit against the most powerful televangelist in America, and “Laughing Academy,” a psychological/legal suspense novel, Neil continues work on other novels in various states of construction, the nearly complete Southern story cycle “Momma and Vernon,” and the very ambitious and potentially brilliant (if he doesn’t goof it up) “Pinball in the House of the Lord.” Neil is seeking literary representation, fame, fortune, adulation, and literary immortality.