In a recent post we discussed the nuts and bolts of filing a takedown notice under the Digital Millennium Copyright Act ("DMCA") when a copyrighted work has been infringed upon online. However, before you submit a takedown there is case law that states you must first consider and rule out whether the "fair use" defense applies to the alleged infringement. [1]
Fair use is a doctrine included in the Copyright Act which allows copyrighted material to be used without the owner’s permission as long as certain criteria are met. If an otherwise problematic use is covered by the fair use doctrine, it is not considered to be an infringement at all. [2] In other words, if fair use applies, you no longer have a valid basis to submit a takedown under the DMCA. As such, understanding fair use is an important part of understanding your rights under the Copyright Act. So, let's take a look at how you might determine whether a certain use is fair.
The Fair Use Factors
In a previous post I put together a summary of the Rentmeester v. Nike case which involved the iconic Michael Jordan photo at the heart of the disputed origin of the Nike Jumpman logo. In that post I included a reproduction of the photo at issue. Since we know that only the copyright owner may reproduce their work, how am I allowed to have that photo in my blog? The answer is fair use. The Copyright Act states as follows:
“...[T]he fair use of a copyrighted work... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.” [3]
That is a wall of legalese, let's break it down a bit. Courts use the four-part test laid out above to analyze fair use claims. They go through each prong and decide whether the use weighs in favor of fair use or against fair use and then tally it up before rendering a decision. So, let’s do the same thing by working through the process I went through to determine whether I could safely use the Rentmeester photo.
Purpose and Character of the Use
There are two parts to this prong and they generally boil down to 1) whether the use is commercial in nature and 2) whether it is a transformative use.
Using someone else's copyrighted work commercially generally weighs against a finding of fair use but courts have cautioned that the fact that something is being exploited commercially should not be overly emphasized as a great deal of secondary uses of copyrighted material are commercial in nature. [4] "More importantly for the first fair-use factor, however, is the 'transformative' nature of the new work...Specifically, we ask '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. . . .' The more transformative a new work, the less significant other inquiries, such as commercialism, become." [5]
Whether a use is transformative will largely depend on the purpose for which it is being used and whether that purpose is different from the original. An example of a transformative fair use can be found in Author’s Guild v. Google, Inc. In that case, Google scanned tens of millions of books to establish a publicly available search function. The search would display the “snippets” of the book where the search phrase appeared. The Author’s Guild claimed that Google made unauthorized reproductions of their work when it created the digital copies. Google claimed that the scans were fair use and the court agreed finding that a transformative use “communicates something new and different from the original or expands its utility, thus serving copyright’s overall objective of contributing to public knowledge.” In this case, the creation of a word-search function was determined to have a “different purpose, character, expression, meaning and message from the page (and the book) from which it is drawn.” The entire book was not visible and Google’s use of the “snippets” expanded and built upon the original use for the copyrighted works. [6]
Considering the above, although my use of the Rentmeester photo is commercial in nature (this blog is considered a commercial venture), the purpose of the use is different from the original. The copyright owner intended to communicate; to portray an athletic figure and make him seem larger than life. My purpose was to compare the photo with the Nike logo in the context of intellectual property laws and explain the parameters of the litigation. Such a purpose is "plainly different from the original purpose for which [the photo] was created" and would likely weigh in favor of fair use. [7]
The Nature of the Copyrighted Work
This prong of the fair use test has to do with whether the copyrighted work is factual or creative in nature and whether it is published or unpublished. Using works that are purely factual in nature is more likely to qualify for fair use than using creative works. The more creative a work is, the more protection it is generally given from copying. Also, using a published work favors fair use more than using an unpublished work. In my example, this prong is probably a wash; although the Rentmeester photo is creative in nature which weighs against fair use, it is also published which weighs in favor of fair use.
The Amount and Substantiality of the Use
The third factor considers “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” [8] So, what does this mean, exactly? Well, it compares the amount and value of what was copied to the purpose of the copying to make sure that no more is copied than is necessary to accomplish the purpose.
For instance, my purpose for using the Rentmeester photo was to analyze, comment and instruct on the intellectual property issues that have come up in relation to it; I cannot really use less than the whole photo and still adequately accomplish my purpose. There is a strong argument that the copyright and trademark analysis requires reproducing the entire photo because the case, and its analysis, is incredibly fact sensitive. But, the Rentmeester photo was originally published in a Special Issue of Life Magazine. [9] If I decided to reproduce the entirety of the Life Magazine issue in order to discuss the one photo, that would be a clear example of using more of a copyrighted work than is necessary to accomplish my purpose. While there is no certain percentage that may be copied before this prong start to weigh against fair use, even if there is a transformative purpose, the copying has to be limited to only as much as is necessary to accomplish said purpose.
The Effect of the Use Upon the Potential Market for or Value of the Copyrighted Work
This final factor is often considered the most important. It analyzes whether the second work takes the place of the original work in the market. "In assessing market harm, we ask not whether the second work would damage the market for the first (by, for example, devaluing it through parody or criticism), but whether it usurps the market for the first by offering a competing substitute." [10] Obviously, there are important parts of the Copyright Act that would be rendered moot if we let secondary uses simply replace the original works in the marketplace. Any use that does this would certainly swing this prong in favor of the copyright owner.
In the Google case above, one of the biggest reasons Google was successful in the litigation is because they were only providing small snippets of the copyrighted books and was not allowing end users to read or see full works. The snippet view did not provide enough access to the work to result in a competing substitute. Even if the snippets resulted in the loss of some sales, the potential for "some loss" is not enough to tilt this factor in favor of the copyright holder. [11]
As for our Rentmeester photo, it is doubtful that my reproduction in this blog would hurt the market for the photograph. The market for that photo is almost certainly a print or art market that would require a much higher resolution, higher quality reproduction than the one shown in my article. Someone looking to own a print or license the work would not come here (or other blogs/articles) and simply print out the low resolution reproduction. As such, I would have a pretty strong argument that my use of the work does not result in a competing substitute for the original.
Tally it All Up
With the Rentmeester photo, in my assessment, the 1st, 3rd and 4th prongs favor fair use while the 2nd is neutral. So, my conclusion is that the use of the photo would be covered by fair use.
But back to our DMCA takedown issue. You need to make a determination whether fair use applies to an incident of copying before you submit a takedown notice. So, after going through the four factors above and analyzing, you would then do what I did with Rentmeester and determine how many of those factors favor fair use. If the tally is in favor of fair use, you need to reconsider submitting a takedown because, remember, any alleged infringement that is covered by fair use is not an infringement at all. If you were doing an analysis and the final tally were 2-2, know that the 1st and4th factors are often considered the most important ones and would carry a bit more weight.
Obviously, a fair use determination is more art than science. No one making this determination in the context of a DMCA takedown is assumed to be an attorney or legal expert. A copyright owner's consideration of fair use "need not be searching or intensive." [12] But, the expectation is that you will have enough information to form a "subjective good faith belief" that a potential infringement is not authorized by fair use before you hit submit on that DMCA. [13]
[1] Lenz v. Universal Music Corp., 815 F.3d 1126, 1145 (9th Cir. 2016).
[2] 17 U.S.C. § 107.
[3] Id.
[4] Broad. Corp. v. Kirkwood, 150 F.3d 104, 109 (2d Cir. 1998).
[5] Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 628 (9th Cir. 2003) (internal citations omitted).
[6] Authors Guild v. Google, Inc., 804 F.3d 202, 214 (2nd Cir. 2015).
[7] Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609-10 (2d Cir. 2006).
[8] 17 U.S.C. § 107(3).
[10] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021).
[11] Authors Guild v. Google, Inc., 804 F.3d 202, 224 (2nd Cir. 2015).
[12] Lenz v. Universal Music Corp., 815 F.3d 1126, 1135 (9th Cir. 2016).
[13] Id.
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