Tag: transformativeness

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Some thoughts on Fair use, Transformative Use and Non-Expressive Use

Fair use, Transformative Use and Non-Expressive Use

Or,

Campbell v. Acuff-Rose and the Future of Digital Technologies, notes on a short presentation at the Fair Use In The Digital Age: The Ongoing Influence of Campbell v. Acuff-Rose’s “Transformative Use Test” Conference, April 17 & 18, 2015, University of Washington School of Law.

Copyright and disintermediation technologies

Copyright policy was hit by an analog wave of disintermediation technology in the post-war era and a digital wave of disintermediation technologies beginning in the 1990s. These successive waves of technology have forced us to reevaluate the foundational assumption of copyright law; that assumption being that any reproduction of the work should be seen as an exchange of value passing from the author (or copyright owner) to the consumer.

Technologies such as the photocopier and the videocassette recorder and then later the personal computer significantly destabilized copyright policy because these inventions, for the first time, placed commercially significant copying technology directly in the hands of large numbers of consumers. This challenge has only been accelerated by digitalization and the Internet. Digitalization allows for perfect reproduction such that the millionth copy of an MP3 file sounds just as good as the first copy.

The implications of the copying that these devices enabled were not clear-cut. In some cases, the new copying technology simply enabled greater flexibility in consumption, in others they generated new copies to be released into the stream of commerce as competitors with the author’s original authorized versions. The Internet has connected billions of people together leading to an outpouring of creativity and user-generativity, but from the perspective of the entertainment industry is also brought people together to undertake a massive scale piracy.

The significant of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)

The Supreme Court in Sony v. Universal[1] had already shown that it was willing to apply fair use in a flexible manner in situations where the use was personal and immaterial to the copyright owner. The significance of the Court’s decision in Campbell[2] was that, by reorienting the fair use doctrine around the concept of transformative use, the Court prepared the way for a flexible consideration of technical acts of reproduction that do not have the usual copyright significance.

Internet search engines, plagiarism detection software, text mining software and other copy-reliant technologies do not read, understand, or enjoy copyrighted works, nor do they deliver these works directly to the public.  They do, however, necessarily copy them in order to process them as grist for the mill, raw materials that feed various algorithms and indices. Campbell arrived just in time to provide a legal framework far more hospitable to copy-reliant technology than had previously existed. Even in its broadest sense, transformative use is not the be all and end all of fair use. At the risk of over-simplification, Sony v. Universal safeguarded the future of the mp3 player, whereas Campbell secured the future of the Internet and reading machines.

Copy-reliant technology and non-expressive use

Some of the most important recent technological fair use cases can be summarized as follows: Copying that occurs as an intermediate technical step in the production of a non-infringing end product is a ‘non-expressive’ use and thus ordinarily constitutes fair use.[3] The main examples of non-expressive use I have in mind are the construction of search engine indices,[4] the operation of plagiarism detection software[5] and, most recently, library digitization to make paper books text-searchable.[6]

To have a coherent concept of fair use, or any particular category of fair use, one needs a coherent concept of copyright. As expressed in the U.S. Constitution, copyright’s motivating purpose is “to promote the Progress of Science and useful Arts.”[7] Ever since the Statute of Anne in 1710, the purpose of Copyright law has been to encourage the creativity of authors and to promote the creation and dissemination of works of authorship. Copyright is not a guarantee of total control; in general, the copyright owner’s rights are limited and defined in reference to the communication of the expressive aspects of the work to the public. This is evident in the idea-expression distinction, the way courts determine whether two works are substantial similar and the focus of fair use cases on expressive substitution. Thus, subsequent authors may not compete with the copyright owner by offering her original expression to the public as a substitute for the copyright owner’s work, but they are free to compete with their own expression of the same facts, concepts and ideas. They are also free to expose, criticize and even vilify the original work. Genuine parodies, critiques and illustrative uses are fair use so long as the copying they partake in is reasonable in light of those purposes.

If public communication and expressive substitution are rightly understood as copyright’s basic organizing principles, then it follows that non-expressive uses — i.e., uses that involve copying, but don’t communicate the expressive aspects of the work to be read or otherwise enjoyed — must be fair use. In fact, they are arguably the purest essence of fair use. Groking the concept of non-expressive use simply involves taking the well understood distinction between expressive and nonexpressive works and making the same distinction in relation to potential acts of infringement.

The legal status of actual copying for nonexpressive uses was not a burning issue before digital technology. Outside the context of reading machines like search engines, plagiarism software and the like, courts have quite reasonably presumed that every copy of an expressive work is for an expressive purpose. But this assumption no longer holds. At a minimum, preserving the functional force of the idea-expression distinction in the digital context requires that copying for purely non-expressive purposes, such as the automated extraction of data, should not be infringing.

Some limits to the non-expressive use framework

Non-expressive use is a sufficient but not necessary condition of fair use. For example, parody is an expressive use, but it is fair use because it does not tend to threaten expressive substation. Even within the realm of recent technology cases, non-expressive use is not the right framework for addressing important man-machine interaction questions such as disability access, also a key issue in the HathiTrust litigation, but it does tie together a number of disparate threads.

The cases which hold that software reverse engineering is fair use are grounded firmly in the idea-expression distinction,[8] but they are not exactly non-expressive use cases for the reasons that follow.[9] The non-expressive use framework is also not the right tool in cases where software is copied in order to access its functionality: after-all, software is primarily functional and its primary (perhaps exclusive) value comes from the function it performs. Software piracy can’t be justified as a non-expressive use, because to do so would defeat the statutory scheme wherein Congress chose to graft computer software protection onto copyright. However, the reverse engineering cases still follow the logic of non-expressive use. In those cases copying to access certain API’s and other unprotectable elements enabled the copyists to either independently recreate that functionality (akin to conveying the same ideas with different expression) or to develop programs or machines that would complement the original software.

Non-expressive use versus transformative use?

The main issue left to resolve in terms of the copy-reliant technology and non-expressive use seems to be one of nomenclature. Is non-expressive use simply a subset of transformative use? Or is it a separate species of fair use with similar implications to that of transformative use.

Non-expressive use, as I have defined and elucidated in a series of law review articles and amicus briefs, is a clear coherent concept that ties a broad set of fair use cases directly to one of copyright’s core principles, the idea-expression distinction. Transformative use, as explained by Pierre Leval and adopted by the Supreme Court is rooted in the constitutional imperative for copyright protection – the creation of new works and the promotion of progress in culture, learning, science and knowledge. But for all that, if transformative use is invoked as an umbrella term, it is often hard to see what holds the category together.

The Campbell Court did not posit transformative use as a unified, exhaustive theory, but it did say that “[a]lthough such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright, …”[10] No doubt, when the Supreme Court spoke of transformative use, it had various communicative and expressive uses, such as parody, the right of reply, public comment and criticism in mind. But since Campbell, lower courts have applied the same purposive interpretation of copyright to a broader set of challenges. Campbell was decided in a different technological context and it is true that many of today’s technological fair use issues were entirely unimaginable before the birth of the World Wide Web and our modern era of big data, cloud computing, social media, mobile connectivity and the “Internet of Things”.

Non-expressive use is a useful concept because it provides a way for courts to recognize the legitimacy of copying that is inconsequential in terms of expressive substitution, but does not necessarily lead to the creation of the type of new expression that the Supreme Court had in mind in Campbell. The use of reading machines in digital humanities research is easy to justify, both in terms of the lack of expressive substitution and in the obvious production of meaning, new insights and potentially new and utterly transformative works of authorship. But what of less generative non-expressive uses? For example, in the future a robot might ‘read’ a copyrighted poster on a subway wall advertising a rock concert in Central Park. The robot might then ‘decide’ to change its travel plans in light of the predictable disruption. The acts of ‘reading’ and ‘deciding’ are both simply computational. Even if reading involves making a copy of the work inside the brain of a machine, it seems nonsensical to conclude that the robot was used to infringe copyright. In the age of the printing press, copying a work had clear and obvious implications. Copying was invariably for expressive ends and it was almost always the point of exchange of value between author and reader. The copyright implications of copying are much more contingent in the digital age.

There is much clarity to be gained by talking directly in terms of non-expressive use rather than relying on transformative as broad umbrella for a range of expressive and non-expressive fair uses. Such clear thinking would hopefully ease the anxieties of the entertainment industry that still fears that fair use is simply a stalking horse for dismantling copyright. Nonetheless, it would not be surprising if courts were more comfortable sticking with the language of transformativeness that Judge Pierre Leval gave us in “Toward a Fair Use Standard“,[11] and the Supreme Court adopted in Campbell.

This is a sketch of some ideas, no doubt revisions will follow after this exciting conference.

Related Publications:

Matthew Sag, Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009)

Matthew Sag, Orphan Works as Grist for the Data Mill, 27 Berkeley Technology Law Journal 1503–1550 (2012)

Matthew Jockers, Matthew Sag & Jason Schultz, Digital Archives: Don’t Let Copyright Block Data Mining, 490 Nature 29-30 (October 4, 2012)

Somewhat Related Publications:

Peter DiCola & Matthew Sag, An Information-Gathering Approach to Copyright Policy, 34 Cardozo Law Review 173–247 (2012)

Matthew Sag, Predicting Fair Use 73 Ohio State Law Journal 47–91 (2012)

Matthew Sag, The Pre-History of Fair Use 76 Brooklyn Law Review 1371–1412 (2011)

 

[1] Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984).

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

[3] See generally, Matthew Sag, Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009)

[4] There is no case addressing the legality of the process of making a text-based search index (as opposed to caching or display of search results), but the proposition naturally flows from Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) and Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) and is a necessary implication of Authors Guild, Inc. v. Hathitrust, Court of Appeals, 2nd Circuit 2014 and Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282 (S.D.N.Y. 2013)

[5] A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009).

[6] Authors Guild, Inc. v. Hathitrust, Court of Appeals, 2nd Circuit 2014; Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282 (S.D.N.Y. 2013). See also Matthew Sag, Orphan Works as Grist for the Data Mill, 27 Berkeley Technology Law Journal 1503–1550 (2012); Matthew Jockers, Matthew Sag & Jason Schultz, Digital Archives: Don’t Let Copyright Block Data Mining, 490 Nature 29-30 (October 4, 2012).

[7] U.S. Const. art. I, § 8, cl. 8.

[8] Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992); Sony Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596, 606 (9th Cir. 2000).

[9] These reasons are more fully elaborated in Matthew Sag, Copyright and Copy-Reliant Technology 103 Northwestern University Law Review 1607–1682 (2009).

[10] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)(citation omitted).

[11] 103 Harv. L. Rev. 1105 (1990)

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 Kienitz v. Sconnie Nation — transformative uses and derivative works. #Fairuse

Some additional thoughts on the 7th Circuit’s decision in Kienitz v. Sconnie Nation LLC, No. 13-3004 (7th Cir. Sept. 15, 2014).

Judge Easterbrook expressed some skepticism today over the Second Circuit’s decision in Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013) because …

asking exclusively whether something is “transformative” not only replaces the list in §107 but also could override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2).

Easterbrook complains that

Cariou and its predecessors in the Second Circuit do not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).”

Ok, so let me explain.

First, Cariou and its predecessors don’t say that every transformative use is fair use. Second, more importantly, transformative use and derivative work are both important terms of art in copyright law. They are not the same thing. Nobody thinks they are.

Section 106(2) of the Copyright Act gives copyright owners an exclusive right to prepare derivative works based on the copyright owner’s original work. As defined in the statute, a derivative work takes a preexisting work and “recasts, transforms, or adapts” that work. The kind of transformations referred to here are not necessarily ‘transformative’ as that term was intended by the Supreme Court in the context of fair use. And yes, obviously, using a word that is not a stem of ‘transform’ would have helped. 

A transformative work, in the fair use sense, is one which imbues the original “with a further purpose or different character, altering the first with new expression, meaning, or message.” [Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (internal citations omitted).] Thus, the assessment of transformativeness is not merely a question of the degree of difference between two works; rather it requires a judgment of the motivation and meaning of those differences.

The difference between a non-infringing transformative use and an infringing derivative work can be illustrated as follows: if Pride and Prejudice were still subject to copyright protection, the novel Pride and Prejudice and Zombies, which combines Austen’s original work with scenes involving zombies, cannibalism, and ninjas, would be considered a transformative parody of the original, and thus fair use rather than infringement. In contrast, a more traditional sequel would merely be an infringing derivative work.

The term transformative use has been applied to cases of literal transformation where it overlaps with the kinds of manipulations that might also create a derivative work. Thus in Suntrust Bank v. Houghton Mifflin Co, substantial copying of a novel in the service of criticism was regarded as transformative.

The term transformative use has been applied to cases of copying without modification, but for a good reason. For example in  Savage v. Council on American-Islamic Relations, Inc., the Islamic organization copied and distributed anti-Islamic statements made by Michael Savage as part of a fund-raising exercise. Recontextualization without modification from one expressive context to another was seen as transformative Bill Graham Archives v. Dorling Kindersley Ltd.

In addition to these cases, courts have also found a number of non-expressive uses to be transformative. In particular, several cases have held that automated processing and display of copyrighted photos as part of a visual search engine is a transformative and thus a fair use. In A.V. v. iParadigms, LLC, the Fourth Circuit found that the automated processing of the plaintiff students’ work in defendant’s plagiarism detection software was fair use). More recently, Authors Guild v. HathiTrust (SDNY), Authors Guild v. HathiTrust (2d Cir) and Authors Guild v. Google (SDNY) held that library digitization to create a search engine was transformative use and fair use.

Maybe we would be better off with different words for all these situations. David Nimmer suggests that in the hands of some judges, transformative use has no content at all and that it is simply synonymous with a finding of fair use. According to Pamela Samuelson, a better approach would be to distinguish transformative critiques, such as parodies, from productive uses for critical commentary. Samuelson also suggests that courts should not label orthogonal uses—uses wholly unrelated to the use made or envisaged by the original author—as transformative uses. But she does think that these are good candidates for fair use.

My personal preference would be for the term transformative use to be confined to expressive uses of copyrighted works and that non-expressive use (as exemplified by search engines, plagiarism detection software, text mining, etc) should be recognized as a distinct category of preferred use. Nonetheless, transformative use is the term of art most courts use and we should probably learn to live with it.

Further Reading

  • David Nimmer, Nimmer on Copyright § 13.05[A][1]
  • Matthew Sag, Copyright and Copy-Reliant Technology, 103 Nw. U. L. Rev. 1607 (2009)
  • Pamela Samuelson, Unbundling Fair Uses, 77 Fordham L. Rev. 2537 (2009).
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Even when Judge Easterbrook is right, he is wrong. #fairuse #copyright #blaaah

I have been wanting to blog about the 7th Circuit’s appalling decision in Kienitz v. Sconnie Nation LLC, No. 13-3004 (7th Cir. Sept. 15, 2014) since I read it — exactly seven twenty minutes ago. However, two fifteen minutes ago I discovered that Prof. Rebecca Tushnet (Georgetown Law) has already said most of what I wanted to say.

The case is about the transformative use of a photo. The case for transformation is pretty easy here because there is both substantive transformation (see below) and an obvious shift in purpose in that the original photo is a PR shot of politician opposed to a street party and the new use is a caricature of the same politician on tee-shirts and tank tops.

sconnie

The court of appeals took this easy case as an opportunity to try to unsettle the law of fair use by casting stones at the concept of transformativeness. The court notes that  transformativeness doesn’t appear in the statute, and says it was “mentioned” it in Campbell.  What the Supreme Court actually said in Campbell was  “The central purpose of this investigation is to see  whether the new work merely supersedes the objects of the original creation,  or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.'”  Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994). (internal citations and quotations omitted)

This is a bit more than a mention.

Now I’ll just quote Rebecca:

…Having not quoted either the Supreme Court or the Second Circuit’s definition of transformativeness (which might allow one to assess whether there is too great an overlap with the derivative works right, or for that matter with the reproduction right since that’s what the majority of Second Circuit transformativeness findings deal with), the Seventh Circuit tells us to stick to the statute.  But it doesn’t tell us what the first factor does attempt to privilege and deprivilege. Instead, the court goes to its own economic lingo-driven test: “whether the contested use is a complement to the protected work (allowed) rather than a substitute for it (prohibited).”  Where this appears in the statute is left as an exercise for the reader, though by placement in the opinion we might possibly infer that it is the appropriate rephrasing of factor one, as opposed to inappropriate transformativeness (though the court later says that factor one isn’t relevant at all).  However, complement/substitute requires some baseline for understanding the appropriate scope of the copyright right—the markets to which copyright owners are entitled—just like transformativeness does.

The Seventh Circuit reached the right result, but its reasoning shallow, its disagreement with the Second Circuit is captious, and its wanton disregard of the jurisprudence of the last twenty years (beginning with the Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc) is profoundly unfortunate. These are smart judges who could have helped further develop and clarify the law, but chose not to.