The Powley & Gibson Blog

Developments in Intellectual Property Law

U.S. Supreme Court to Decide Whether Copyright Plaintiff Needs Registration Before Filing Suit

By Stephen M. Ankrom

This term, the Supreme Court will decide Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, No. 17-571, a case that will address a long-standing split in the Circuit courts as to whether a copyright plaintiff must have a copyright registration before filing suit or whether a pending application is sufficient to satisfy the registration requirements of the Copyright Act.  Given the Copyright Act’s statute of limitations which only permits copyright owners to pursue claims for infringement that accrued[1] in the three year period immediately prior to the filing date, this decision could have significant impact on copyright owners that do not promptly register their copyrights.

The Circuit Split

The Copyright Act provides that:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

17 U.S.C. § 411(a) (“Section 411”).

The Ninth and the Fifth Circuit Courts of Appeal have held that “registration of [a] copyright claim has been made” when the copyright holder delivers the required application, deposit copy, and fee to the Copyright Office (the “application” approach). Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 619 (9th Cir. 2010); Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir. 2004).  The Eighth Circuit, in non-binding dicta, has endorsed the application approach as well. Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006).  In contrast, the Tenth and Eleventh Circuits have held that the registration requirement is only met once the Copyright Office acts on that application by either rejecting the application or issuing a registration (the “registration” approach). M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir. 1990).

The Seventh Circuit contains conflicting dicta on whether it follows the application or registration approach. Compare Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (“[A]n application for registration must be filed before the copyright can be sued upon.”) with Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004) (“[A]n application to register must be filed, and either granted or refused, before suit can be brought.”).  The First and Second Circuits have acknowledged the split in authority but has declined to adopt either the application or registration approach. Alicea v. Machete Music, 744 F.3d 773, 779 (1st Cir. 2014); Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 125 (2d Cir. 2014).

The Case Before the Supreme Court

Fourth Estate Public Benefit Corporation is a news organization producing online journalism. It licenses articles to websites but retains the copyright in those articles.  Wall-Street.com obtained such a license.  The license agreement required that Wall-Street.com remove all content produced by Fourth Estate upon termination of the license.  Wall-Street.com subsequently cancelled the license but continued to display articles produced by Fourth Estate.  Fourth Estate then filed a copyright application for the articles in question with the Copyright Office and filed suit in the Southern District of Florida against Wall-Street.com while the application was pending.  The district court dismissed the suit for lack of an issued registration, Fourth Estate Pub. Benefit Corp. v. Wall-Street.com LLC, No. 16-civ-60497, 2016 WL 9045625, at *1 (S.D. Fla. May 23, 2016), and the Eleventh Circuit affirmed the district court’s decision on appeal. Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017).

Conflicting Rationales

Advocates of the registration approach primarily rely on the statutory language of the Copyright Act to support their position, citing Section 411’s provision that “registration of the copyright claim [be] made” before filing suit and arguing that the Copyright Act “defines registration as a process that requires action by both the copyright owner and the Copyright Office.” See, e.g., id. Thus, the registration requirement of Section 411 is not satisfied until the Copyright Office acts on the application by issuing a registration or denying the application.

By contrast, courts following the application approach argue that the broader purposes underlying the Copyright Act validate the application approach.  They claim that requiring a plaintiff to delay filing suit until the Copyright Office issues a registration can result in a copyright owner not being able to sue for infringement altogether, which is contrary to the general protections afforded copyright owners by the Copyright Act.  This is because the Copyright Act’s statute of limitations provides that a copyright owner cannot recover for any infringement that accrued more than three years prior to the filing of the suit. 17 U.S.C. 507(b).  Given the substantial, and increasing, lag between the chronically-underfunded Copyright Office’s receipt of an application and its issuance of a registration certificate, a plaintiff could see the statute of limitations expire during the time it took the Copyright Office to act on the application.  Proponents of the application approach further argue that there is no compelling justification to delay a lawsuit until the Copyright Office has issued a registration:  Despite the lag between the submission of an application and the issuance of a registration, most registrations will have been issued or rejected during the pendency of litigation, and the Register of Copyright’s decision as to whether or not to grant a registration is ultimately reviewable by the courts in any event.  17 U.S.C. 411(a); 410(c).

Regardless of how the Supreme Court decision comes down, copyright owners may need to adopt new copyright filing procedures to ensure they are able to enforce their copyrights in federal courts.

[1] Depending on the jurisdiction, a copyright infringement claim accrues either on the date the infringement occurs or when the copyright owner reasonably should have become aware of the infringement.

Does “Full Costs” Mean Full Costs? Supreme Court to Hear Arguments in Rimini Street, Inc. v. Oracle USA, Inc.

Matthew F. Abbott

On September 27, 2018, the Supreme Court granted a petition for writ of certiorari in Rimini Street, Inc. v. Oracle USA, Inc.  (No. 17-1625).  At issue is whether the Copyright Act’s allowance of “full costs” to a prevailing party is limited to taxable costs, or whether the Copyright Act allows recovery of taxable and non-taxable costs, which may include a variety of significant litigation expenses, including e-discovery costs and expert witness fees.

Background

In 2010, Respondent Oracle USA Inc. (“Oracle”) filed suit against Petitioner Rimini Street, Inc. (“Rimini”) for copyright infringement and violation of California and Nevada’s computer abuse laws. The jury ultimately awarded Oracle $35,600,000 in lost licensing revenues for the copyright infringement claims, and $14,400,000 in lost profits for the state law claims.  The district court further awarded Oracle $28,502,246.40 in attorney’s fees, $4,950,566.70 in taxable costs and $12,774,550.26 in non-taxable costs.

The Ninth Circuit affirmed the verdict and damages award for Oracle’s copyright infringement claims, and affirmed the awards of taxable and non-taxable costs.  A request by Rimini for en banc review was denied, and Rimini filed its petition for writ of certiorari to the Supreme Court.

Interpretation of 17 U.S.C. § 505

At issue is the proper interpretation of the Copyright Act, 17 U.S.C. § 505, which provides that “the court, in its discretion, may allow the recovery of full costs by or against any party” (emphasis added).   The controversy has arisen because 28 U.S.C. § 1920 provides that a court may only award “taxable” costs as specifically enumerated in six categories under the statute (such “taxable” costs include, for example, fees for printing and witnesses, costs of the production of transcripts used in the case, and costs for the copying of materials necessarily obtained for use in the case).[i]  28 U.S.C. § 1920 governs judicial procedure generally, not only copyright cases.

A split has developed among the circuit courts of appeal as to whether “full costs” in 17 U.S.C. § 505 is limited to the costs listed in § 1920, or whether § 505 allows recovery of additional, non-taxable costs.  To date, the Eighth and Eleventh Circuits have limited recovery of costs under § 505 to those enumerated in 28 U.S.C. § 1920.  Pinkham v. Camex, Inc., 84 F.3d 292, 295 (8th Cir. 1996) (per curiam); Artisan Contractors Ass’n of America, Inc. v. Frontier Insurance Co., 275 F.3d 1038, 1039-40 (11th Cir. 2001) (per curiam).  In contrast, the Ninth, Sixth and First Circuits have held that § 505 also allows for the recovery of non-taxable costs.  Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869, 885 (9th Cir. 2005); Coles v. Wonder, 283 F.3d 798, 803 (6th Cir. 2002); InvesSys, Inc. v. McGraw-Hill Cos., 369 F.3d 16, 22-23 (1st Cir. 2004).

In its Petition, Rimini argues that the Eighth and Eleventh Circuits properly limited recovery under § 505 to those costs enumerated in 28 U.S.C. § 1920.  Rimini adopts the reasoning of these decisions, arguing that Supreme Court precedent requires that a statute must “‘clear[ly],” “explicitly,” or “plain[ly],’ evidence [] congressional intent” to expand recovery of costs beyond the limitations of § 1920, and that 17 U.S.C. § 505 does not demonstrate such intent. See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 445 (1987); W. Va. Univer. Hosps. Inc., v. Casey, 499 U.S. 83, 87-88 (1991)

In response, Oracle argues that the Ninth Circuit correctly interpreted the Copyright Act where it allowed recovery of nontaxable costs under § 505, and that use of the word “full” in the Copyright Act was “clear evidence of congressional intent that non-taxable costs should be available.”  Twentieth Century Fox, 429 F.3d at 885.  Oracle further argues that Twentieth Century Fox is consistent with Crawford Fitting, which limited cases governed by Fed. R. Civ. P 54(d) to recovery of taxable costs under 28 U.S. § 1920, but expressly contemplated that cost recovery could be controlled by a separate statute, such as § 505.

Ramifications for Copyright Owners

The Supreme Court granted Rimini’s petition notwithstanding Oracle’s attempts to minimize the Circuit split by arguing that the Eighth and Eleventh Circuit decisions “contain about two sentences of reasoning” and “have not been followed by a single court of appeals since.” Clearly, the Court does not view the issue to be as settled as Oracle claims it to be, although it is difficult to predict any outcome at this early stage, before briefing or argument have taken place.

Copyright owners are advised to follow this case going forward, as it will very likely determine whether prevailing parties in copyright cases can expect to recover costs incurred for significant litigation expenses including e-discovery costs, expert witness and jury consultant fees and travel expenses.  The outcome of this case will likely affect the inclusion of nontaxable costs in formulating settlement offers, and should also be considered carefully in connection with offers of judgment served under Fed. R. Civ. P. 68, as the shifting of post-offer non-taxable costs could result in a significant liability for a party that has rejected a proper offer of judgment.

[i] Under 28 US.C. § 1920, the following may be taxed as costs:

 

(1) Fees of the clerk and marshal;

(2)  Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;

(3)  Fees and disbursements for printing and witnesses;

(4)  Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;

(5) Docket fees under section 1923 of this title;

(6)  Compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.

 

Additionally, 28 U.S.C. § 1821 places further limitations on the per diem fees and travel and subsistence allowances payable to witnesses.

 


[1] Under 28 US.C. § 1920, the following may be taxed as costs:
(1) Fees of the clerk and marshal;
(2)  Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;
(3)  Fees and disbursements for printing and witnesses;
(4)  Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;
(5) Docket fees under section 1923 of this title;
(6)  Compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.
Additionally, 28 U.S.C. § 1821 places further limitations on the per diem fees and travel and subsistence allowances payable to witnesses.

Copyright Office Changes

Patrick. B. Monahan.

The U.S. Copyright Office has recently proposed several rule changes that, if adopted, would modernize the procedures for obtaining federal copyright registrations for groups of serials and daily newsletters, as well as alter the pricing structure for the application process for those publicationsFor publishers of periodicals, these new registration procedures discussed below will hopefully simplify the registration process.

  • PROPOSED CHANGES TO GROUP REGISTRATION OF SERIALS AND DAILY NEWSLETTERS

A. INTRODUCTION

The Copyright Office has proposed changes to the requirements of and procedures for group registration of both serials and daily newsletters. For the purposes of copyright registration, these two types of collective works are defined as follows:

  • A collective work is “a work in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” 17 U.S.C. § 101. Collective works are a type of compilation, “a work formed by the collection and assembly of preexisting materials or data that are selected, coordinated or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” Id.
  • A serial is “[a] work that is issued or intended to be issued on an established schedule in successive parts bearing numerical or chronological designations that are intended to be continued indefinitely.” 37 C.F.R. § 202.3(b)(1)(v). Examples of serials include periodicals, newspapers, magazines, newsletters, annuals, and other similar works. A daily newsletter is a type of serial.
  • A newsletter is a type of serial that is routinely published and distributed by mail or electronic media at least two days per week and that contains information of interest chiefly to a special group (such as trade and professional associations, corporations, schools, and churches). Newsletters are generally available by subscription and not sold at retail outlets such as newsstands. Compendium of U.S. Copyright Office Practices § 1111.1.

B. PROPOSED CHANGES TO GROUP REGISTRATION OF SERIALS

The Copyright Office is proposing to update its regulations and procedures for group registration of serials. Currently, related serials published at intervals of a week or longer may be registered on the basis of a single application, deposit and filing fee using the Copyright Office’s group registration procedure provided that the following conditions are met: 

(A) The Library of Congress receives two complimentary copies promptly after publication of each issue of the serial; 

(B) The single application covers no more than the issues published in a given three month period; 

(C) The claim to copyright for which registration is sought is in the collective work; 

(E) The collective work authorship is essentially new material that is being published for the first time; 

(F) The collective work is a work made for hire; 

(G) The author(s) and claimant(s) of the collective work is the same person(s) or organization(s); and 

(H) Each issue was created no more than one year prior to publication and all issues included in the group registration were published in the same calendar year. 

See 37 C.F.R. § 202.3(b)(6)(i). 

The proposed rule change, if enacted, would do the following:

  1. Codify the requirement (currently only in the Compendium of U.S. Copyright Office Practices) that each serial issue must be an “all-new” collective work not previously published, and each issue must be fixed and distributed as a discrete, self-contained collective work; 
  2. Confirm the Copyright Office’s position that a group registration has the same effect as a separate registration for each work included in the group registration (the group registration extends to each issue, as well as all elements of the issues owned by the copyright claimant and first published in those issues); 
  3. Require applicants to use the Copyright Office’s electronic filing system for applications and discontinue the current paper system (which should streamline the application process). Applicants will be required to upload their serials in digital form through the electronic registration system. The Copyright Office will no longer accept physical copies. 
  4. Maintain the requirements that the author and claimant must be the same, that each issue must be a work for hire, and that at least two issues must be included in the group registration;  
  5. Eliminate the requirement that each issue must have been created no more than one year prior to publication;  
  6. Expressly mandate that the issues be published under the same continuing title and bear issue dates within the same three-month period in the same calendar year (requiring applicants to provide publication dates); and 
  7. If the serial is published in the US in a physical format, publishers must provide the Library of Congress with two complimentary subscriptions, unless it is informed that the serial is not needed for the Library of Congress’s collections. Publishers of electronic-only serials only need provide copies if requested in writing by the Copyright Office. 

 

Of particular note for publishers is item 3in which the Copyright Office mandates use of the electronic filing system for all applications. In addition, item memorializes a long-standing practice, currently present only in the Compendium of U.S. Copyright Office Practices and caselaw precedent, that registration of a group of works does not limit the number of works eligible for statutory damages for copyright infringement – each issue of a group of serials registered using this procedure is a separate “work” entitled to a separate award of statutory damages.  

 

C. PROPOSED CHANGES TO GROUP REGISTRATION OF DAILY NEWSLETTERS

Second, the Copyright Office is proposing to update its regulations and procedures for the group registration of newsletters. Currently, two or more issues of a daily newsletter may be registered on the basis of a single application, deposit and filing fee using the Copyright Office’s group registration procedure provided that the following conditions are met: 

(i)Publication occurs at least two days each week and the newsletter contains news or information of interest chiefly to a special group;

(ii)The works are essentially all new collective works or all new issues that have not been published before;

(iii)Each issue is a work made for hire;

(iv)The author(s) and claimant(s) are the same person(s) or organization(s) for all of the issues;

(v)All issues bear issue dates within a single calendar month under the same continuing title;

(vi)A deposit of one complete copy of each issue in the group is provided;

(vii)Registration is sought within three months of the publication date of the last issue included in the group; and

(viii)Form G/DN, the current Copyright Office form for group registration of daily newsletters, is submitted via mail, along with deposit copies and fee.

See 37 C.F.R. § 202.3(b)(9).

The proposed rule change, if enacted, would do the following:

  1. Eliminate the requirement that each newsletter issue be a work-for-hire; 
  2. Eliminate the requirement that each newsletter issue be a collective work (note however that each issue must still be “all new”); 
  3. Eliminate the three-month deadline for filing the registration application (currently, an application must be filed within three months of the publication of the latest issue referenced in the application in order for the works to be eligible for statutory damages in a copyright infringement action); 
  4. Confirm the Copyright Office’s position that a group registration has the same effect as a separate registration for each work included in the group registration (that is, the group registration extends to each issue, as well as all elements of the issues owned by the copyright claimant and first published in those issues); 
  5. Require applicants to file their applications electronically by uploading digital copies of their newsletters using the Copyright Office’s electronic filing system. The Office will no longer accept paper applications and physical copies; and  
  6. If the newsletter is published in the US in a physical format, publishers must provide the Library of Congress with two complimentary subscriptions, unless it is informed that the newsletter is not needed for the Library of Congress’s collections. Publishers of electronic-only newsletters only need provide copies if requested in writing by the Copyright Office. 

The effect of these changes is similar to those regarding serials. The requirement that all new applications be filed electronically should both simplify the process and allow for faster processing times and fewer errors. Furthermore, the change memorializes the Copyright Office’s guidance that each newsletter registered in a group is a separate “work” eligible for a separate award of statutory damages.

 

II. PROPOSED CHANGES TO FEE SCHEDULE

Finally, the Copyright Office has also proposed a new schedule of fees that greatly favors electronic filing. A selection of some of those fee schedule changes can be found below, but the full proposed schedule with changes can be found at: https://www.federalregister.gov/documents/2018/05/24/2018-11095/copyright-office-fees. 

 

Registration Type  Current fee ($USD)  Proposed fee ($USD) 
Registration of a claim in an original work of authorship:     
Standard Application (electronic only)  55  75 
Single Application (electronic only)  35  55 
Paper Application 

 

85  125 
Group registration of newsletters:     
Electronic filing  N/A  95 
Paper filing, physical copies (Form G/DN)  80  125 
Group registration of serials, PER ISSUE:     
Electronic filing  N/A  35 
Paper filing, physical copies (Form SE/Group)  25  70 

 

III. CONCLUSION

  The period for comments on the proposed changes to the group registration of serials and daily newsletters has closed, however, the Federal Register has not announced whether any changes have been formally adopted as of this writing. For more detailed reading, the Federal Register entry discussing the above proposed changes to group registration of serials may be found at https://www.federalregister.gov/documents/2018/05/17/2018-10422/group-registration-of-serialsThe Federal Register Entry discussing the proposed changes to group registration of daily newsletters may be found at https://www.federalregister.gov/documents/2018/05/17/2018-10420/group-registration-of-newsletters 

Trademark Considerations: Deceptiveness

Jason H. Kasner

When choosing a new trademark or service mark, you need to be generally concerned with two things: (1) whether the new mark could be considered descriptive of the product or service it is intended for (i.e. descriptiveness); and (2) whether there are any trademarks or service marks in the marketplace so similar to the intended mark that consumers could be confused as to the source or origin of the goods or services (i.e. likelihood of confusion).  While these considerations are critical, there are some other considerations that could also prevent registration of a new mark.  For instance, what if the mark was not descriptive of the actual product or service it is intended for but descriptive of something else that the product or service lacks?  In some cases, these ‘misdescriptions’ could be problematic and may even lead to a determination that the mark cannot be registered on the basis that it is deceptive under Section 2(a) of the Trademark Act.[1]

In a recent decision, the Trademark Trial and Appeal Board upheld a refusal to register the mark “P6 CHROME” for “dietary and nutritional supplements that do not contain chromium” in Class 5 (In re Woodbolt Distribution, LLC 2018 WL 1981349 (T.T.A.B. 2018)).  The Board agreed with the Examining Attorney’s conclusion that the mark “misdescribes the goods as containing chromium, a substance some doctors say has health benefits” and confirmed the refusal to register under Section 2(a) of the Trademark Act.  Despite arguing that the term “chrome” had multiple meanings not associated with chromium, per se, and that the term was intended to refer to the product’s metallic packaging, the Board determined that the presence of the term “chrome” would create consumer confusion and falsely suggest that the supplement contained chromium when, in fact, it did not.

The Board considered several factors, including dictionary definitions of the term “chrome,” the use of the term “chrome” (and variations thereof) in the marketplace for dietary supplements, whether consumers shopping for dietary supplements would believe that a product called P6 CHROME would contain chromium and finally, whether the misdescription would make the product more desirable to consumers.  The Board determined that (i) the common definition of “chrome” can mean chromium; (ii) other competitors in the marketplace used the term “chrome” (or variations thereof) to market dietary supplements containing chromium (e.g. CHROME MATE, ULTRACHROME 500, AQUA CHROME); (iii) consumers were likely to believe a product called P6 CHROME contained chromium; and (iv) the suggestion that the product contained chromium did make the product more desirable to consumers of dietary supplements.  The Board affirmed the refusal to register the mark P6 CHROME as deceptive under Section 2(a) of the Trademark Act.

Rejection on this basis is not common, but it is something that should be considered when contemplating a new mark.  Look to your market – does the mark describe something consumers may want and expect the product (or service) to contain which it does not?  If so, you may be inviting a deceptiveness challenge down the road.  The resources spent trying to register a potentially deceptive mark may be better spent in selecting and developing a better, stronger mark.  The time and resources lost in trying to argue around a deceptiveness objection is time lost building good will and market awareness for your brand if, ultimately, you must give up on a deceptive mark and choose an alternate brand.  Relying on the expert guidance of a trademark attorney could prevent such an outcome.  A good trademark attorney can help you avoid pitfalls at the early stages of the selecting and identifying a brand, saving your company resources and time, and allowing you to concentrate on building a strong brand from the outset.

 

[1] Section 2 of the Trademark Act states, in part, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter…”

What Is Fair Use of Copyrighted Works?

Suzanna M. M. Morales

In today’s digital world, it is easier than ever to copy a third party’s work that is covered by copyright. The term “fair use” is often used to justify the use of such copyrighted materials without the owner’s consent, but what does “fair use” really mean?

Fair use is an affirmative defense to copyright infringement. That means that even if an alleged infringer is found to have copied the copyright owner’s work, using the work fairly, the alleged infringer will not be liable for infringement. It is the alleged infringer’s burden to prove fair use. However, it is difficult to determine whether there is fair use in any particular instance, and prior court rulings provide little guidance because each case is considered on its own unique facts.

This article discusses the current meaning of fair use as that doctrine evolves under U.S. copyright law, and why it is not so easy to pin down.

Under the U.S. copyright statute (17 U.S.C. § 107), a court will consider four factors to determine whether a use of copyrighted material constitutes “fair use”:

  • (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purpose

Here, one important consideration is whether the use is “transformative,” i.e., that the new use “communicates something new and different from the original or expands its utility.” (This language is from the influential Second Circuit Court of Appeals in Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015)). In order to be “transformative,” the use must “do something more than repackage or republish the original copyrighted work.” For instance, a user cannot simply re-post the copyrighted work of another in its entirety, no matter what the purpose, if it is to be transformative.

In addition, this factor specifically directs the court to consider whether the purpose is commercial. However, just because a for-profit entity uses the material, that does not end the inquiry. The court will take a closer look at the actual purpose of the copying, no matter what the status of the copier.

  • (2) the nature of the copyrighted work

This factor is often considered in comparison with the purpose of the use of the work. One famous example is the Supreme Court’s holding that 2 Live Crew’s off-color interpretation of the song “Pretty Woman,” appropriating the signature opening riff of the famous Roy Orbison song, was a parody of the original, and was used fairly.

There is some indication that the courts will consider the copying of heavily fact-based works to be more likely to constitute fair use because the underlying factual information itself is not copyrightable, but other courts have discounted this, considering the creativity involved in incorporating and presenting those facts in a finished work.

In any event, this factor is generally not significant to the overall consideration of fair use.

  • (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole

Here, the court will consider the amount of the copyrighted work made available to the public, rather than the amount used by the alleged copier. Rather than being a simple equation of the percentage of copying, the court will consider whether the material copied is at the heart of the copyrighted work. For example, the Supreme Court held that excerpts of a few hundred words from the book – a highly-anticipated memoir of former President Gerald Ford – was a substantial portion of the work. Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985).

  • (4) the effect of the use upon the potential market for or value of the copyrighted work

The U.S. Supreme Court has held that this is the most important factor. Harper & Row, 471 U.S.  at 566. This factor considers whether the claimed infringer’s use is a competing substitute for the original which would deprive the copyright owner of significant revenues. This factor considers not only the potential effect on the market for the copyrighted work of the claimed infringer, but also the effect of widespread use of the work in a similar manner. Here, the court will consider whether an unlimited number of others using the copyrighted work in the same way would impact the copyright owner’s market for its work.

However, a type of use that is completely unlikely to become a part of the normal market for the original work is more likely to be considered to be fair use than a market that the copyright owner would be likely to exploit.

*                                  *                                  *

It is not possible to generalize instances that may be considered fair use, because courts consider the facts of each case on a case-by-case basis, considering not only these, but also any other relevant factors. Fair use is not a black-and-white, binary consideration, but will depend on the specific factors of each case. A main theme of the fair use consideration is whether the copying would usurp the market and supplant the original. And as new technologies and ways to copy continue to develop, the law will continue to evolve.