Blog

The parties in the matter of Shell v. Devries, a case from the U.S. District Court for the District of Colorado, are no strangers to litigation with one another. In a previous civil rights lawsuit filed by plaintiff Shell, the defendants filed a motion for attorney’s fees, attaching thereto a copy of ten pages of Shell’s copyrighted website, profane-justice.org.

Shell filed a second lawsuit against the same defendants, this time claiming that the use of the pages as an exhibit to the filing in the previous case was an infringement of copyright. The defendants moved to dismiss under Fed. R. Civ. P. 12(b)(6), asserting a fair use defense. The court granted the motion.

Photo courtesy Steve Rhodes under a (CC) license.

The court disagreed with the defendants’ contention that use of copyrighted works in legal proceedings is “inherently” a fair use. Citing to the case of Images Audio Visual Productions v. Perini Bldg. Co., 91 F.Supp.2d 1075 (E.D.Mich.2000), it observed that where judicial proceedings are one of the intended markets of the copyrighted work, the copyright holder is entitled to exercise control over the use of his works within this market; the fair use doctrine does not require the wholesale abandonment of copyright protection at the courthouse door.

But at least two other cases have held that use of copyrighted works in court proceedings is protected by fair use. In Religious Technology Center v. Wollersheim, 971 F.2d 364, 367 (9th Cir. 1992) the court found fair use where the defendants copied and distributed religious scriptures from former members of the Scientology Church and gave them to expert witnesses for the purpose of preparing testimony in the case. In Jartech v. Clancy, 666 F.2d 403, 406-07 (9th Cir.1982), abbreviated copies of adult movies for use as evidence in a nuisance abatement proceeding were considered fair use.

In this case, the court examined the four factors of 17 U.S.C. 107 to conclude that the use made by the defendants in attaching the web pages to the motion was a non-infringing fair use.

First, there were no allegations in the complaint that the defendants used the material for the “intrinsic purpose for which it was prepared,” namely, to “generate income” or provide “creative analysis and commentary about events occurring related to the [previous] lawsuit.”

The second factor also weighed in favor of fair use, as the materials were primarily a chronology of events, and thus were more factual in nature than creative.

As for the third factor, the court observed that the use of the work was limited. Accordingly, the factor carried “very little weight.” In any event, citing to Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 (9th Cir. 1992), the court hled that “the fact that an entire work was copied does not . . . preclude a finding of fair use.” (The case of Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) would also have been a good case to cite for this point.)

Finally, for the important fourth factor — the effect on the market of the copyrighted work — the court found that the complaint did not allege that the marketability of the work was impaired. Moreover, the court observed that “[i]ndeed, it is impossible to imagine how the defendants’ use of the materials as an exhibit to a motion for attorneys’ fees could in any way impact the marketability of the materials.”

Shell v. Devries, (Slip Op.) No. 06-318, 2007 WL 324592 (D.Colo. Jan. 31, 2007)

“Orphan works” are works that are protected by copyright, but for which it is difficult, if not impossible, to locate the copyright owner. These works usually have little or no commercial value, but some argue that the uncertainty surrounding their ownership needlessly discourages subsequent creators and users from incorporating them into new creative efforts.

Works created before the effective date of the Copyright Act of 1976 (i.e., under the 1909 Act) were subject to copyright protection for 28 years. That duration could be extended if the copyright owner renewed the copyright for another 28 years. Accordingly, the old system has been characterized as an “opt-in” system, in that to extend the duration of copyright ownership, the owner had to take certain affirmative steps.

The Copyright Renewal Act of 1992, Pub. L. No. 102-307, 106 Stat. 264, eliminated the renewal requirements for works created between 1964 and 1977. The Sunny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998), extended the term of copyright ownership to the life of the author plus 70 years (in the case of works authored by individuals). The present framework has been described as an “opt-out” system, in that copyright protection attaches automatically, unless a person takes some affirmative act to convey the work to the public domain.

The opt-out system and longer terms of copyright mean a larger number of orphan works. Some say that orphan works “probably comprise the majority of the record of 20th century culture.”

Brewster Kahle, founder of the Internet Archive, along with a number of other plaintiffs, sought to fix the present situation of orphan works by challenging the constitutionality of the Copyright Renewal Act of 1992 and the Sunny Bono Copyright Term Extension Act. They filed a declaratory judgment action in federal court in California, emphasizing the increased possibilities for archiving and disseminating content over the Internet. When the court granted the government’s motion to dismiss, the plaintiffs sought review. On appeal, the Ninth Circuit affirmed the dismissal of the action.

[Aside: Check out this interesting interview that Dr. Moira Gunn did with Brewster Kahle last year.]

The plaintiffs raised two arguments. First, they argued that the change from an “opt-out” system to an “opt-in” system “altered the traditional contour of copyright” and therefore, under the holding of Eldred v. Ashcroft, 537 U.S. 186 (2003), should be subject to First Amendment review. The second argument was that the current copyright term — providing what the plaintiffs characterized as a term that is “effectively perpetual” — violated the Constitution’s “limited Times” prescription, found at Article I, Sec. 8, Clause 8.

The court rejected each of these arguments. Relying on the Eldred case, the court held that the Copyright Renewal Act of 1992 and the Sunny Bono Copyright Term Extension Act both served to “lengthen the term for [certain works], but in doing so they simply placed existing copyrights in parity with those of future works.” In Eldred, the act of creating “parity” survived constitutional scrutiny. And so it did in this case too.

As for the second argument, namely, that the current term of copyright — in many instances well over a century — was too long, the court relied again on Eldred. Noting that the decision of Congress to extend the term of copyright was subject to rationality review, the court looked to the “rationally credited projections that longer terms would encourage copyright holders to invest in the restoration and public distribution of their works.” In other words, Congress had undertaken an appropriate balancing test between encouraging creativity and bringing works into the public domain.

Kahle v. Gonzalez, (Slip Op.), —F.3d—-, No. 04-17434 (9th Cir., Jan. 22, 2007).