TJOFLAT, Circuit Judge:
Three publishing houses, Cambridge University Press, Oxford University Press, and Sage Publications, Inc. (collectively, "Plaintiffs") allege that members of the Board of Regents of the University System of Georgia and officials at Georgia State University ("GSU") (collectively, "Defendants") infringed Plaintiffs' copyrights by maintaining a policy which allows GSU professors to make digital copies of excerpts of Plaintiffs' books available to students without paying Plaintiffs. Plaintiffs alleged seventy-four individual instances of infringement, which took place during three academic terms in 2009. The District Court issued an order finding that Plaintiffs failed to establish a prima facie case of infringement in twenty-six instances, that the fair use defense applied in forty-three instances, and that Defendants had infringed Plaintiffs' copyrights in the remaining five instances.
Finding that GSU's policy caused the five instances of infringement, the District Court granted declaratory and injunctive relief to Plaintiffs. Nevertheless, the District Court found that Defendants were the prevailing party and awarded them costs and attorneys' fees. Because we find that the District Court's fair use analysis was in part erroneous, we reverse the District Court's judgment; vacate the injunction, declaratory relief, and award of costs and fees; and remand for further proceedings consistent with this opinion.
Like many recent issues in copyright law, this is a case in which technological advances have created a new, more efficient means of delivery for copyrighted works, causing copyright owners and consumers to struggle to define the appropriate boundaries of copyright protection in the new digital marketplace. These boundaries must be drawn carefully in order to assure that copyright law serves its intended purpose, which is to promote the creation of new works for the public good by providing authors and other creators with an economic incentive to create. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044, 45
The fair use doctrine provides a means by which a court may ascertain the appropriate balance in a given case if the market actors cannot do so on their own. Fair use is a defense that can excuse what would otherwise be an infringing use of copyrighted material. See 17 U.S.C. § 107 ("[T]he fair use of a copyrighted work ... is not an infringement of copyright."). To prevail on a claim of fair use, a defendant must convince the court that allowing his or her unpaid use of copyrighted material would be equitable and consonant with the purposes of copyright. In order to make this determination, the court must carefully evaluate the facts of the case at hand in light of four considerations, which are codified in the Copyright Act of 1976: (1) the purpose of the allegedly infringing use, (2) the nature of the original work, (3) the size and significance of the portion of the original work that was copied, and (4) the effect of the allegedly infringing use on the potential market for or value of the original. Id. These factors establish the contours within which a court may investigate whether, in a given case, a finding of fair use would serve the objectives of copyright. Here, we are called upon to determine whether the unpaid copying of scholarly works by a university for use by students — facilitated by the development of systems for digital delivery over the Internet — should be excused under the doctrine of fair use.
Plaintiffs are three publishing houses that specialize in academic works. Plaintiff Cambridge University Press ("Cambridge") is the not-for-profit publishing house of the University of Cambridge in England, having an American branch headquartered in New York City. Plaintiff Oxford University Press, Inc. ("Oxford") is a not-for-profit United States corporation associated with Oxford University in England and headquartered in New York City. Plaintiff Sage Publications, Inc. ("Sage") is a for-profit Delaware corporation, headquartered in Sherman Oaks, California.
Plaintiffs do not publish the large, general textbooks commonly used in entry-level university courses. Rather, Plaintiffs publish advanced scholarly works, which might be used in upper-level undergraduate and graduate courses. Cambridge and Oxford publish scholarly books and journals on niche subject areas. Their works involved in this case include research-based monographs, which are "small, single author books which give in-depth analysis of a narrow topic," Cambridge Univ. Press v. Becker, 863 F.Supp.2d 1190, 1212 (N.D.Ga.2012) (footnote omitted), instructional books, trade books, and other works on academic topics. Sage primarily publishes books on the social sciences. All three plaintiffs publish, in addition to works by a single author, "edited books" which feature the contributions of multiple authors. Id.
Plaintiffs market their books to professors who teach at universities and colleges. Cambridge and Oxford regularly send complimentary copies of their publications to professors. Sage provides trial copies upon request. Plaintiffs intend that professors use Plaintiffs' publications in their
Rather than assigning whole books, some professors assign or suggest excerpts from Plaintiffs' books as part of the curriculum for their courses. Professors might do this by putting the work on reserve at the university library so that students can visit the library to read an assigned excerpt. Or, professors might prepare a bound, photocopied, paper "coursepack" containing excerpts from several works for a particular course. Often, a third-party copy shop assembles these coursepacks, performing the copying and binding, obtaining the necessary licenses from publishers, and charging students a fee for the finished coursepack. In recent years, however, universities — following the trend with regard to distribution of many forms of media the world over — have increasingly abandoned paper coursepacks in favor of digital distribution of excerpts over the Internet.
GSU is a public university in Atlanta, Georgia. It is part of the University System of Georgia, and is overseen by the Board of Regents of the University System of Georgia. GSU maintains two on-campus systems known as "ERes" and "uLearn" for digital distribution of course materials to students.
ERes (short for "E-Reserves") is an "electronic reserve system" hosted on servers maintained by GSU, and managed by GSU's library staff. Since 2004, GSU has used ERes to allow GSU students to access course materials — including course syllabi, class notes, sample exams, and excerpts from books and journals — on the Internet via a web browser. In order to place an excerpt from a book or journal on ERes, a professor must either provide a personal copy of the work to the GSU library staff or indicate that the GSU library owns a copy. A member of the library staff then scans the excerpt to convert it to a digital format and posts the scanned copy to ERes. GSU students are given access to an ERes website specific to the courses in which they are enrolled. On each course-specific ERes website, students find their reading assignments listed by title. The scanned excerpts are accessible via hyperlink. When a student clicks a link for a particular assignment, the student receives a digital copy of a scanned excerpt that the student may view, print, save to his or her computer, and potentially keep indefinitely. ERes course websites are password-protected in order to limit access to the students in the particular course. Once a course ends, students no longer have access to the ERes website for that course.
uLearn is a "course management system" hosted on servers maintained by the Board of Regents. Like ERes, uLearn provides course-specific webpages through which professors may make course material available, including digital copies of excerpts from books, which students in the course may view, print, or save. The most significant difference between the ERes and uLearn systems is that uLearn allows professors to upload digital copies of reading material directly to their course websites while ERes forces professors to rely
ERes and uLearn have been popular at GSU.
There exists a well-established system for the licensing of excerpts of copyrighted works. Copyright Clearance Center ("CCC") is a not-for-profit corporation with headquarters in Danvers, Massachusetts. CCC licenses excerpts from copyrighted works for a fee, acting on behalf of publishers who choose to make their works available through CCC. These licenses are called "permissions." All three Plaintiffs offer excerpt-specific permissions to photocopy or digitally reproduce portions of their works, which may be obtained directly from Plaintiffs or through CCC. Permissions are not, however, available for licensed copying of excerpts from all of Plaintiffs' works.
CCC offers a variety of permissions services to various categories of users, including corporate, educational, and institutional users. One such service, the Academic Permissions Service ("APS"), licenses educational users to make print copies on a per-use basis. CCC also offers an electronic course content service ("ECCS") for licensing of digital excerpts by educational users on a per-use basis, that — in 2008, the year for which evidence on the question was presented — offered only a small percentage of the works that were available through APS. ECCS is designed for electronic reserve systems such as ERes and uLearn. Software is available that would allow GSU library personnel to place an order with CCC for a permission to provide students with a digital copy of an excerpt via ERes. CCC also offers an Academic Repertory License Service ("ARLS") which affords subscribers access to excerpts from a set group of about nine million titles, approximately 17 percent of which are available in digital format. Sage
When the GSU bookstore assembles and sells a paper coursepack containing excerpts from copyrighted works, GSU pays permissions fees for use of the excerpts.
On April 15, 2008, Plaintiffs filed their original complaint in the United States District Court for the Northern District of Georgia. Plaintiffs alleged that hundreds of GSU professors have made thousands of copyrighted works — including works owned or controlled by Plaintiffs — available on GSU's electronic reserve systems without obtaining permissions from copyright holders, and that GSU's administration facilitated, encouraged, and induced this practice. Plaintiffs sued Defendants in their official capacities as GSU officials, claiming (1) direct copyright infringement
On December 15, 2008, Plaintiffs filed their First Amended Complaint. The First Amended Complaint added several members of the Board of Regents as Defendants, alleging that they were ultimately responsible for the alleged acts of infringement at GSU because of their supervisory authority over the University System of Georgia. Defendants' Answer to the First Amended Complaint again denied infringement, asserted fair use, and claimed sovereign immunity and Eleventh Amendment immunity for all Defendants.
In late December 2008, the University System of Georgia convened a Select Committee on Copyright to review GSU's then-existing copyright policy, which was called the "Regents' Guide to Understanding Copyright & Educational Fair Use."
The Checklist allows GSU professors to perform a version of the analysis a court
After completing an initial round of discovery, both parties moved for summary judgment on February 26, 2010. Plaintiffs alleged that the 2009 Policy had failed to curb the alleged infringement of their copyrighted works, and argued that they were entitled to summary judgment on all claims. Plaintiffs argued that they were entitled to an injunction based on the alleged infringements listed in their First Amended Complaint, that had occurred prior to enactment of the 2009 Policy, and added allegations regarding new instances of infringement, which also occurred prior to enactment of the 2009 Policy. Plaintiffs also argued that injunctive relief was appropriate as to Defendants under Ex parte Young, 209 U.S. 123, 28 S.Ct. 441, 52 L.Ed. 714 (1908), which permits prospective injunctive relief against state officers in their official capacities.
Defendants argued that they were entitled to summary judgment on all claims. Defendants also contended that Plaintiffs were only entitled to prospective declaratory and injunctive relief as to ongoing and continuous conduct, and so the District Court should only consider alleged infringements that occurred since GSU enacted the 2009 Policy. Thus, Defendants contended, any claims based on GSU's superseded pre-2009 policy were moot. Defendants also claimed that GSU's adoption of the 2009 Policy had substantially reduced the amount of Plaintiffs' works used by GSU professors.
On August 11, 2010, and August 12, 2010, the District Court ordered Plaintiffs to produce a list of all claimed infringements of their works that had occurred at GSU during the period following enactment of the 2009 Policy, which included the 2009 "Maymester" (a three-week
On September 30, 2010, the District Court denied Plaintiffs' motion for summary judgment. The District Court granted in part and denied in part Defendants' motion for summary judgment, granting summary judgment to Defendants on the claims of direct and vicarious infringement, and denying summary judgment to Defendants on the claim of contributory infringement.
In its summary judgment order, the District Court construed the First Amended Complaint as claiming that the 2009 Policy as applied to Plaintiffs' works "has led to continuing abuse of the fair use privilege." Doc. 235, at 5. Accordingly, the District Court agreed that only alleged acts of infringement that took place after GSU enacted the 2009 Policy were relevant to Plaintiffs' claims, and held that it would only consider those acts. However, the District Court declined to consider at that time the list of alleged post-2009 Policy infringements that Plaintiffs had provided because the parties had not yet conducted discovery as to these allegations.
The District Court granted summary judgment for Defendants on the direct infringement claim because it found that GSU as an entity is not itself capable of copying or making fair use determinations, and that Defendants cannot be held liable under a respondeat superior theory because "respondeat superior applies in the copyright context as a basis for finding vicarious liability, not direct liability." Id. at 19. With regard to the vicarious infringement claim, the District Court held that summary judgment for Defendants was appropriate because it found that there was no evidence to support the conclusion that GSU had profited from the allegedly infringing use of Plaintiffs' works by GSU personnel, or that GSU's shift to digital distribution of excerpts via its electronic reserve system served as a "direct draw for students or that Defendants have a direct financial interest in copyright infringement." Id. at 21. With regard to the contributory infringement claim, the District Court denied both Plaintiffs' and Defendants' motions for summary judgment, finding that the record was silent as to whether the 2009 Policy "encourage[s] improper application of the fair use defense." Id. at 30.
The District Court further held:
Id. at 30.
On October 20, 2010, Plaintiffs filed a motion for partial reconsideration of the
On November 4, 2010, Defendants moved to dismiss Plaintiffs' First Amended Complaint for lack of subject matter jurisdiction. Defendants argued that Plaintiffs' claims were barred by the Eleventh Amendment, and that Plaintiffs could not make use of the Ex parte Young exception to Eleventh Amendment immunity because Defendants were not personally violating — or threatening to violate — copyright law. Defendants contended that their supervisory role over GSU's policies and personnel did not create a sufficient causal nexus to the infringing activity, and thus Ex parte Young did not apply. The District Court denied Defendants' motion to dismiss, holding that it would not presently address Defendants' argument that Ex parte Young did not apply because "Plaintiffs' First Amended Complaint currently alleges that Defendants' own copying, scanning, displaying, and distributing of Plaintiffs' materials violated Plaintiffs' copyrights." Doc. 267, at 12.
On November 5, 2010, the District Court ordered discovery regarding GSU's use of Plaintiffs' copyrighted material during the 2009 Maymester, the 2009 summer term, and the 2009 fall term. In response, on March 15, 2011, the parties filed a joint document detailing ninety-nine alleged acts of infringement that occurred during that period. This filing included the name of each allegedly infringed work, the circumstances of the alleged infringement, and Defendants' objections to each claimed infringement. For all ninety-nine, Defendants claimed fair use. In some instances, Defendants also argued that Plaintiffs had not provided evidence of a copyright registration for the work in question. Defendants also objected to the method by which Plaintiffs had calculated the ratio between the number of pages in an excerpt and the total number of pages in the work. Plaintiffs had made these calculations based on the total number of pages in the textual body of the work, excluding parts such as tables of contents, indexes, and prefaces. Defendants argued that these non-body parts of a work should be included in the total page count of a work.
On May 11, 2011, in response to the District Court's Consolidated Pretrial Order dated May 2, 2011, Plaintiffs filed a proposed order for injunctive relief. Plaintiffs' proposed injunction would essentially limit GSU to copying that fell within the parameters set forth in the Agreement on Guidelines for Classroom Copying in Not-For-Profit Educational Institutions with Respect to Books and Periodicals (the "Classroom Guidelines").
On May 11, 2012, the District Court issued an order holding that Defendants had infringed Plaintiffs' copyright in five of the seventy-four instances at issue. Id. at 1363. First, the District Court held that Plaintiffs were entitled to the benefit of the Ex parte Young exception to Eleventh Amendment immunity because the GSU Defendants were responsible for the creation and implementation of the 2009 policy, and the Board of Regents at least tacitly approved it. Id. at 1209.
After holding that it could appropriately enter injunctive relief pursuant to Ex parte Young, the District Court described how it would proceed. First, because "there is no precedent on all fours for how the factors should be applied where excerpts of copyrighted works are copied by a nonprofit college or university for a nonprofit educational purpose," the District Court would determine how the fair use factors should be applied in this case, and whether any other factors merit consideration. Id. at 1210. Then, in order to assess the efficacy of GSU's copyright policy in complying with the requirements of the law, the District Court would assess each of the seventy-four claimed instances of infringement individually and "compare the outcome of this process to the outcomes that were achieved under the [fair use] checklists prescribed under the 2009 Copyright Policy." Id. at 1211.
First, the District Court made several findings of fact. Id. at 1211-21. In addition to findings — described above — regarding GSU's copyright policy, Plaintiffs' operations, and CCC's services for licensing of excerpts of copyrighted works, the District Court made detailed findings regarding the market for excerpts of Plaintiffs' works, based largely on the parties' stipulations.
With regard to CCC's APS and ECCS programs, the District Court noted that publishers determine the fee for licensing excerpts of their materials, which for academic users is currently between ten and twenty-five cents per page. Id. at 1215. Cambridge stipulated that it charges eleven cents per page for APS and fifteen cents per page for ECCS, Sage stipulated that it charges fourteen cents per page (unspecified whether for permissions via APS, ECCS, or both), and Oxford stipulated that it charges twelve cents per page (unspecified whether for APS, ECCS, or both). Id. CCC charges a $3.50 service charge per order, and keeps 15 percent of the permission fee. Id. All three Plaintiffs have in-house permissions departments, but 90 percent of Oxford's permissions income and 95 percent of Cambridge's comes from CCC. Id. Although it did not note a percentage, the District Court found that "many though not all of Sage's works at
The District Court found that "Plaintiffs earn considerable annual rights and permissions income through CCC. CCC made rights and permissions payments to Cambridge, Oxford, and Sage totaling $4,722,686.24 in FY 2009 and $5,165,445.10 in FY 2010," amounting to an average of $1,574,228.74 per-Plaintiff in FY 2009. Id. at 1216 (footnote omitted). However, these totals involve payments through services which have "no demonstrated relevance to this case." Id.
Considering only payments for permissions under the academic permissions services — the APS, ECCS, and Academic Annual Copyright License
The District Court calculated the percentage of Plaintiffs' total revenues that these figures represent and determined that
Id.
The District Court noted that Plaintiffs offered no testimony or evidence demonstrating that they lost book sales on account of Defendants' actions, and accordingly found that no book sales were lost. Id. at 1217. The District Court also found that if GSU students had been required to pay permissions fees for the use of excerpts of Plaintiffs' works in 2009, "there would have been some small overall increase in the cost of education." Id.
The District Court turned to its conclusions of law, first laying out the requirements for establishing a prima facie case of copyright infringement. To establish a prima facie case, Plaintiffs must establish that (1) they own valid copyrights in the allegedly infringed works and (2) that Defendants copied protected elements of the allegedly infringed works. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). Plaintiffs must also establish that the copyright for the allegedly infringed work has been registered in the U.S. Copyright Office. 17 U.S.C. § 411(a).
The District Court found that there were valid copyright registrations in all but one of the instances of alleged infringement. Cambridge Univ. Press, 863
Then, the District Court set forth the parameters of its fair use analysis. The District Court held that the first fair use factor, "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes," 17 U.S.C. § 107(1), "strongly favor[ed] Defendants" in all instances because "[t]his case involves making copies of excerpts of copyrighted works for teaching students and for scholarship... [and so] [t]he use is for strictly nonprofit educational purposes," Cambridge Univ. Press, 863 F.Supp.2d at 1224-25.
The District Court held that the second fair use factor, "the nature of the copyrighted work," 17 U.S.C. § 107(2), favored Defendants in all instances because it found — after undertaking an individualized review of all of the works at issue for which it found that Plaintiffs had made a prima facie case of infringement — that "the books involved in this case are properly classified as informational in nature, within the spectrum of factual materials and hence favoring fair use." Cambridge Univ. Press, 863 F.Supp.2d at 1226.
The District Court held that the third fair use factor, "the amount and substantiality of the portion used in relation to the copyrighted work as a whole," 17 U.S.C. § 107(3), "favor[ed] either Plaintiffs or Defendants, depending on the amount taken from each book," Cambridge Univ. Press, 863 F.Supp.2d at 1235.
After hearing testimony from several GSU professors as to the reasoning behind their choice of a particular excerpt and how use of that excerpt furthered the professor's goals for a particular class, the District Court found that all of the selections furthered the legitimate educational purposes of the courses in which they were used. Id. The District Court also found that some professors' educational purposes were furthered by using whole chapters of books, because chapters typically contain a complete treatment of a topic. Id. at 1234
The District Court then determined that "[t]he right approach is to select a percentage of pages which reasonably limits copying and to couple that with a reasonable limit on the number of chapters which may be copied." Id. at 1235. Accordingly, the District Court held that
Id. at 1243.
The District Court held that its factor three analysis would not be bound by the standards provided in the Classroom Guidelines. Id. at 1227-29. The District Court also chose to consider non-body material — such as dedications and introductions — as part of the work for purposes of calculating the work's total page count, noting that such material constitutes copyrightable expression, and rejected Plaintiffs' argument — raised late in the proceedings, that Defendants' took 100 percent of a work when copying a whole chapter from a book of chapters by individual authors on individual subjects — on grounds of untimeliness and unfair surprise. Id. at 1230-31.
With regard to the fourth fair use factor, "the effect of the use upon the potential market for or value of the copyrighted work," 17 U.S.C. § 107(4), the District Court found that "Defendants' use of small excerpts did not affect Plaintiffs' actual or potential sales of books" because they do not substitute for the books, Cambridge Univ. Press, 863 F.Supp.2d at 1236. However, the District Court found that Defendants' use of excerpts may be at the cost of Plaintiffs' licensing revenues, and so may affect the market for licensing of excerpts. Id. at 1237. Thus, the District Court concluded that, in reviewing the individual instances of alleged infringement, it would analyze fair use factor four as follows:
Id. at 1243.
However, "[b]ecause Plaintiffs advocate that CCC has created an effective means through which Defendants could have obtained licensed copies of the excerpts in question here, the [District] Court place[d] the burden on Plaintiffs to show that CCC provided, in 2009, reasonably efficient access to the particular excerpts involved in this case." Id. at 1237. Thus, in cases where no evidence showed whether digital permissions were readily available for excerpts of a particular work, the District Court found that the fourth fair use factor favored Defendants.
The District Court took into account two additional considerations. First, the District Court noted that, based on testimony that "royalties are not an important incentive for academic writers," and on a presumption that that academic authors publish primarily to enhance their professional reputation and contribute to academic knowledge, "[t]here is no reason to believe that allowing unpaid, nonprofit academic use of small excerpts in controlled circumstances would diminish creation of academic works." Id. at 1240. Second, the District Court found that "it is consistent with the principles of copyright to apply the fair use doctrine in a way that promotes the dissemination of knowledge, and not simply its creation." Id. at 1241. The District Court noted that the evidence demonstrates that academic permissions income does not represent a significant portion of Plaintiffs' overall revenue. Id. Thus, the District Court found that a slight diminution of Plaintiffs' permissions income caused by the District Court's findings of fair use would not appreciably harm Plaintiffs' ability to publish scholarly
The District Court proceeded to undertake an individualized analysis of the seventy-four individual instances of alleged infringement, subject to the foregoing analysis. Id. at 1243-1363. The District Court held that Plaintiffs had established a prima facie case of copyright infringement in forty-eight instances. Id. at 1254-59; 1263; 1265-67; 1270-77; 1281; 1283-1296; 1299-1300; 1303-1310; 1316; 1322-24; 1329-30; 1333; 1339-51; 1355-62. For the other twenty-six instances, the District Court held that Plaintiffs had failed to establish a prima facie case either because Plaintiffs failed to demonstrate ownership of or (in one case) a valid registration of a copyright in the work in question, or because any infringement was de minimis in cases where the evidence showed that students either never accessed the excerpt or were required to buy the full book from which the excerpt in question had been copied. Id. at 1245-53; 1262; 1265; 1269; 1280; 1283; 1299; 1302; 1312-15; 1319-21; 1326-27; 1332; 1335-37; 1354.
In weighing the fair use factors to assess each of the forty-eight instances of alleged infringement for which the District Court found that Plaintiffs had established a prima facie case, the District Court held that fair use applied whenever at least three of the four factors favored Defendants. Id. at 1255-58; 1264; 1266; 1271-76; 1282; 1284-97; 1300-01; 1304-11; 1317; 1323-25; 1329-31; 1334; 1339-52; 1356; 1361. Because the District Court found that factors one and two favored Defendants in all cases, the District Court essentially held that fair use applied each time a professor posted an excerpt that fell within the 10 percent-or-one-chapter limit on allowable copying the District Court had set (such that factor three favored Defendants) and each time there was no evidence that digital permissions were available for excerpts of the work in question (such that factor four favored Defendants).
With regard to factor three, in thirty-five of the forty-eight claims of infringement, the District Court found that the copying was "decidedly small" because it fell within the 10 percent-or-one-chapter limit, and so factor three favored Defendants. Id. at 1254-58; 1266; 1270-72; 1276; 1281; 1283-88; 1291; 1295-97; 1300-01; 1304-08; 1317; 1325; 1329-30; 1334; 1339-45; 1348-50; 1356; 1361. In the other thirteen cases, the copying exceeded the 10 percent-or-one-chapter limit, and so the District Court held that factor three favored Plaintiffs. Id. at 1259; 1263; 1268; 1274; 1277; 1290; 1294; 1310; 1323; 1346; 1352; 1358; 1362.
With regard to factor four, in seventeen of the forty-eight cases, the District Court found that the parties had presented no evidence regarding licensing availability, but because the District Court placed the burden on this issue on Plaintiffs, the District Court found that factor four favored Defendants. Id. at 1290-97; 1300-01; 1311; 1317; 1323-25; 1329-31; 1340-42; 1347; 1352. In the other thirty-one cases, the District Court found that Plaintiffs had made digital licensing available for excerpts of the work in question, and so, because there was a "ready market for licensed digital excerpts of [the] work in 2009," factor four strongly favored Plaintiffs. Id. at 1255-60; 1263; 1266-68; 1271-78; 1281; 1284-88; 1304-09; 1334; 1339; 1344-45; 1348-50; 1356-62.
When the District Court's weighing of the factors resulted in a tie — factors one and two favored Defendants and factors three and four favored Plaintiffs — the District
Thus, of the forty-eight instances of alleged infringement for which the District Court found that Plaintiffs had established a prima facie case, the District Court held that Defendants had infringed Plaintiffs' copyrights in five instances, id. at 1260; 1269; 1278; 1358-59; 1363, and that the fair use defense applied in forty-three, id. at 1255-58; 1264; 1266; 1271-76; 1282; 1284-97; 1300-01; 1304-11; 1317; 1323-25; 1329-31; 1334; 1339-52; 1356; 1361. The District Court concluded that the 2009 Policy had caused the five instances of infringement. Id. at 1363. In reaching this conclusion, the District Court noted that the 2009 Policy did not limit copying to excerpts which were "decidedly small," did not prohibit the copying of multiple chapters from the same book, and did not provide sufficient guidance in determining the effect the use of an excerpt may have on the market for or value of the copyrighted work. Id.
In light of its findings, the District Court directed Plaintiffs to propose appropriate injunctive and declaratory relief. Id. at 1364. On May 31, 2012, Plaintiffs filed a second proposed injunction. This injunction would allow copying without permission in a manner that appears to be modelled on the fair use parameters set forth in District Court's judgment, as described above. The proposed injunction would also require a reasonable investigation as to license availability, recordkeeping as to unlicensed copying and the related license availability investigations, periodic reports and certifications of compliance by Defendants to the District Court for a three-year period, and periodic granting of access to GSU's electronic reserve systems to Plaintiffs' representative over a three-year period.
In their Opposition to Plaintiffs' Request for Injunctive Relief, filed on June 15, 2012, Defendants stated that GSU had revised its 2009 Policy in accordance with the District Court's May 11, 2012, order, and submitted into evidence revised versions of the 2009 Policy and Fair Use Checklist which purportedly "incorporate[d] the provisions of the Court's Order that were not already present in the 2009 Copyright Policy." Doc. 432, at 15; Doc. 432-1; Doc. 432-2.
On August 10, 2012, the District Court issued an order entering declaratory and injunctive relief. The District Court enjoined Defendants "to maintain copyright policies for Georgia State University which are not inconsistent with the Court's Order of May 11, 2012 and this Order." Doc. 441, at 11. By way of declaratory relief, the District Court clarified the holding of its May 11, 2012, order in three detailed sections, titled as follows:
Id. at 2-9.
Finally, because "Defendants prevailed on all but five of the [ninety-nine] copyright claims which were at issue when the trial began," the District Court declared Defendants the prevailing party, and determined that it would exercise its discretion to award attorneys' fees and costs to Defendants. Id. at 12-13. The District Court noted:
Id. at 14. On September 10, 2012, Plaintiffs appealed the District Court's August 10 order entering declaratory and injunctive relief, seeking review of that order and all prior orders entered.
Finally, on September 30, 2012, the District Court issued an order awarding to Defendants attorneys' fees in the amount of $2,861,348.71 and costs in the amount of $85,746.39; and entered final judgment on its finding of infringement, its order granting declaratory and injunctive relief, and the award of fees and costs to Defendants. On October 2, 2012, Plaintiffs appealed the District Court's September 30 order and final judgment, as well as all prior orders. On October 23, 2012, the District Court stayed execution of the portion of its judgment awarding Defendants attorneys' fees and costs pending appeal.
We consolidated Plaintiffs' appeals. On appeal, Plaintiffs do not contest the District Court's ruling that Plaintiffs failed to make out a prima facie case of infringement in twenty-six instances of copying. However, Plaintiffs argue that the District Court's application of the fair use factors was legally flawed, and that the District Court consequently erred in finding that the fair use defense applied in forty-three of the forty-eight remaining instances of alleged infringement.
Furthermore, Plaintiffs argue, because the District Court erred in identifying only five instances of infringement during the period it examined in 2009 and failed to apprehend that the 2009 Policy facilitates widespread, ongoing infringement, the injunction the District Court ordered is "unduly narrow." Appellants' Br. at 83. Thus, Plaintiffs contend, we must vacate the injunction "and remand with instructions to enter an appropriately comprehensive injuncti[on]" along the lines of the injunctive relief Plaintiffs proposed below.
Defendants argue that the District Court did not err in its fair use analysis. Thus, Defendants contend, in light of their successful defense in all but five of the alleged instances of infringement, the District Court's injunction was proper. Defendants also argue that Plaintiffs' more restrictive proposed injunction is unnecessary because GSU already revised its copyright policy in order to comply with the District Court's order. Accordingly, Defendants contend, we must affirm the District Court's order finding five instances of infringement and its entry of injunctive and declaratory relief.
Defendants argue that the District Court properly undertook a work-by-work analysis of the individual claims of infringement and did not err in concluding that Defendants were the prevailing party because disposition of the individual instances of infringement represents the central issue in the case, upon which Plaintiffs did not prevail, having proved only five instances of infringement out of the ninety-nine Plaintiffs alleged at the beginning of trial. Because Plaintiffs refused to limit the scope of their claims, which significantly increased Defendants' costs, Defendants argue that the District Court did not abuse its discretion in awarding fees and costs to Defendants. Defendants also argue that the District Court did not err in awarding expert witness fees to Defendants, because such fees are routinely awarded as incidental expenses incurred as part of attorneys' work on litigation. Accordingly, Defendants contend, we must affirm the District Court's award of attorneys' fees and costs.
Finally, Defendants argue — apparently in the alternative to Defendants' argument that the District Court's entry of injunctive and declaratory relief should be affirmed — that, because Plaintiffs cannot establish that the 2009 Policy violates any federal law, and because Defendants' generalized responsibility for GSU policy is not sufficient to establish the necessary connection
"After a bench trial, we review [a] district court's conclusions of law de novo and [a] district court's factual findings for clear error." Proudfoot Consulting Co. v. Gordon, 576 F.3d 1223, 1230 (11th Cir.2009). Fair use involves both questions of law and questions of fact. Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560, 105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985).
We review a district court's decision to award injunctive relief for abuse of discretion. Klay v. United Healthgroup, Inc., 376 F.3d 1092, 1096 (11th Cir.2004); see also Pac. & S. Co. v. Duncan, 744 F.2d 1490, 1499 (11th Cir.1984) (reviewing for abuse of discretion the district court's decision not to permanently enjoin a seller of videotapes containing material that the court had held infringed copyrights).
We review de novo a district court's determination as to whether a party is the "prevailing party" and hence eligible for an award of fees under the Copyright Act, 17 U.S.C. § 505. Dionne v. Floormasters Enters., Inc., 667 F.3d 1199, 1203 (11th Cir.2012). We review a district court's ultimate decision to award attorneys' fees or costs for abuse of discretion. Id.
As an initial matter, we must dispose of Defendants' contention that they are immune from suit pursuant to the Eleventh Amendment. Because this argument is outside the scope of Plaintiffs' brief and was not raised by Defendants on cross-appeal, we find that the argument is not properly raised. As we have previously explained, "a party who has not appealed may not bring an argument in opposition to a judgment or attack the judgment in any respect, or hitch a ride on his adversary's notice of appeal to enlarge his rights under the judgment or diminish those of the opposing party." Lawhorn v. Allen, 519 F.3d 1272, 1286 n. 20 (11th Cir.2008) (citations omitted) (quotation marks omitted). An argument that the District Court's ruling must be vacated because suit is barred by Eleventh Amendment immunity is not excepted from this rule. Majette v. O'Connor, 811 F.2d 1416, 1419 n. 3 (11th Cir.1987). Accordingly, we decline to address Defendants' Eleventh Amendment argument.
The Copyright Clause of the U.S. Constitution provides that Congress shall have the power "[t]o promote the Progress of Science
Promoting the creation and dissemination of ideas has been the goal driving Anglo-American copyright law since the enactment of the first English copyright statute to explicitly vest copyright in a work's creator, the Statute of Anne of 1710, which declared that it was "[a]n Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors ... during the Times therein mentioned." 8 Ann., c. 19 (1710); see also Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105 (1990) (describing the Statute of Anne and its influence on early U.S. copyright law and the fair use doctrine). Thus, in our tradition, "copyright is not an inevitable, divine, or natural right that confers on authors the absolute ownership of their creations. It is designed rather to stimulate activity and progress in the arts for the intellectual enrichment of the public." Cariou v. Prince, 714 F.3d 694, 705 (2d Cir.2013) (quoting Leval, supra, at 1107); see also Aiken, 422 U.S. at 156, 95 S.Ct. at 2044 ("The immediate effect of our copyright law is to secure a fair return for an `author's' creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.").
The Copyright Act furthers this purpose by granting authors a bundle of "exclusive rights," 17 U.S.C. § 106, "in original works of authorship fixed in any tangible medium of expression," id. § 102, for a limited time, id. §§ 302-305. While an author holds a copyright in his or her work, the author may control, for example, reproduction of the work or distribution of the work to the public. Id. § 106(1), (3).
In part because copyright is not grounded in authors' natural rights but rather meant to provide maximal public benefit, the Copyright Act's grant to authors of a monopoly over the use of their works is limited in several important ways beyond its finite duration.
The fair use doctrine also critically limits the scope of the monopoly granted to authors under the Copyright Act in order to promote the public benefit copyright is intended to achieve. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 1169, 127 L.Ed.2d 500 (1994) ("From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright's very purpose, `[t]o promote the Progress of Science....'" (quoting U.S. Const., Art. I, § 8, cl. 8.)). In other words, fair use provides necessary "breathing space within the confines of copyright." Id. at 579, 114 S.Ct. at 1171. By allowing for the limited use of copyrighted works without the permission of the copyright holder by members of the public in certain circumstances, fair use "permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster." Id. at 577, 114 S.Ct. at 1170 (alteration in original) (quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S.Ct. 1750, 1767, 109 L.Ed.2d 184 (1990)).
In a sense, the grant to an author of copyright in a work is predicated upon a reciprocal grant to the public by the work's author of an implied license for fair use of the work. See Harper & Row, 471 U.S. at 549, 105 S.Ct. at 2225 ("[T]he author's consent to a reasonable use of his copyrighted works ha[d] always been implied by the courts as a necessary incident of the constitutional policy of promoting the progress of science ... since a prohibition of such use would inhibit subsequent writers from attempting to improve upon prior works and thus ... frustrate the very ends sought to be attained." (quoting H. Ball, Law of Copyright and Literary Property 260 (1944))). Thus, in order to promote the creation of new works, our laws contemplate that some secondary users — those implied licensees making fair use of copyrighted works — will be allowed to make use of original authors' works. At the same time, a secondary user who takes overmuch in the name of fair use operates outside the bounds of his or her implied-by-law license.
How much unpaid use should be allowed is the bailiwick of the fair use doctrine. To further the purpose of copyright, we must provide for some fair use taking of copyrighted material. This may be viewed as a transaction cost, incidental to the business of authorship. But if we set this transaction cost too high by allowing too much taking, we run the risk of eliminating the economic incentive for the creation of original works that is at the core of
Thus, the proper scope of the fair use doctrine in a given case boils down to an evidentiary question. As a conceptual matter, in making fair use determinations, we must conjure up a hypothetical perfect market for the work in question, consisting of the whole universe of those who might buy it, in which everyone involved has perfect knowledge of the value of the work to its author and to potential buyers, and excluding for the moment any potential fair uses of the work. Then, keeping in mind the purposes animating copyright law — the fostering of learning and the creation of new works — we must determine how much of that value the implied licensee-fair users can capture before the value of the remaining market is so diminished that it no longer makes economic sense for the author — or a subsequent holder of the copyright — to propagate the work in the first place.
In most instances, licensors (authors and copyright holders) and licensees (both paying licensees, and implied-by-law fair use licensees) will independently perform some version of this analysis in order to reach a mutually equitable arrangement. Ideally, a copyright holder will sell his or her works to buyers who pay the price that the market will bear and will routinely tolerate secondary uses which do not adversely impact that market. However, in the event of a disagreement, the copyright holder can file an infringement suit and the secondary user may invoke the fair use defense. In so doing, the parties essentially turn to a court to make a determination for them as to the appropriate boundaries of the secondary user's implied license.
The fair use doctrine, as codified by Congress,
17 U.S.C. § 107.
In drafting § 107, Congress "resisted pressures from special interest groups to create presumptive categories of fair use, but structured the provision as an affirmative defense requiring a case-by-case analysis."
Thus, the examples enumerated in the preamble of § 107 — "criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research" — are meant to "give some idea of the sort of activities the courts might regard as fair use under the circumstances. This listing was not intended to be exhaustive, or to single out any particular use as presumptively a `fair' use." Id. (citations omitted) (quotation marks omitted); see also Peter Letterese & Assocs., Inc. v. World Inst. of Scientology Enters. Int'l, 533 F.3d 1287, 1308 (11th Cir.2008) ("The fair use doctrine is an `equitable rule of reason'; neither the examples of possible fair uses nor the four statutory factors are to be considered exclusive." (quoting Abend, 495 U.S. at 236-37, 110 S.Ct. at 1768)). Furthermore, because fair use is an affirmative defense, its proponent bears the burden of proof in demonstrating that it applies. See Campbell, 510 U.S. at 590, 114 S.Ct. at 1177; Harper & Row, 471 U.S. at 561, 105 S.Ct. at 2231.
Before we turn to the District Court's analysis of each of the four fair use factors, we must first address the District Court's overarching fair use methodology. Plaintiffs make two broad arguments that the District Court's methodology was flawed, only one of which is persuasive.
Plaintiffs contend that the District Court erred by performing a work-by-work analysis that focused on whether the use of each individual work was fair use rather than on the broader context of ongoing practices at GSU. We disagree. Fair use must be determined on a case-by-case basis, by applying the four factors to each work at issue. See Campbell, 510 U.S. at 577, 114 S.Ct. at 1170. Were we to accept Plaintiffs' argument, the District Court would have no principled method of determining whether a nebulous cloud of infringements purportedly caused by GSU's "ongoing practices" should be excused by the defense of fair use. Thus, we find that the District Court's work-by-work approach
Plaintiffs also argue that the District Court erred in giving each of the four factors equal weight, essentially taking a mechanical "add up the factors" approach, finding fair use if three factors weighed in favor of fair use and one against and vice versa, and only performing further analysis in case of a "tie." We agree that the District Court's arithmetic approach was improper.
Congress, in the Copyright Act, spoke neither to the relative weight courts should attach to each of the four factors nor to precisely how the factors ought to be balanced. However, the Supreme Court has explained that "the four statutory factors [may not] be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright." Id. at 578, 114 S.Ct. at 1170-71. In keeping with this approach, a given factor may be more or less important in determining whether a particular use should be considered fair under the specific circumstances of the case. See id. at 586, 114 S.Ct. at 1175 (noting that the second factor is generally not important in determining whether a finding of fair use is justified in the case of a parody). As such, the four factors "do not mechanistically resolve fair use issues." Harper & Row, 471 U.S. at 588, 105 S.Ct. at 2245 (Brennan, J., dissenting). "Because [fair use] is not a mechanical determination, a party need not `shut-out' her opponent on the four factor tally to prevail." Wright v. Warner Books, Inc., 953 F.2d 731, 740 (2d Cir.1991). Accordingly, we find that the District Court erred in giving each of the four factors equal weight, and in treating the four factors as a simple mathematical formula. As we will explain, because of the circumstances of this case, some of the factors weigh more heavily on the fair use determination than others.
We now turn to the District Court's analysis of each individual fair use factor. Although we have found that the District Court's method for weighing the four factors against one another was erroneous, this does not mean that the District Court's reasoning under each of the four factors is also necessarily flawed. Rather, we must determine the correct analysis under each factor and then ascertain whether the District Court properly applied that analysis.
Plaintiffs argue that the District Court erred in its application of each of the four fair use factors. Plaintiffs' argument centers on a comparison of the circumstances of the instant case to those of the so-called "coursepack cases," in which courts rejected a defense of fair use for commercial copyshops that assembled paper coursepacks containing unlicensed excerpts of copyrighted works for use in university courses.
In Basic Books, Inc. v. Kinko's Graphics Corp., publishing houses sued Kinko's, a commercial copyshop, alleging that Kinko's infringed the publishers' copyrights when it copied excerpts from the publishers' books, without permission and without payment of a license fee, and sold the copies for profit in bound, paper coursepacks to students for use in college courses. 758 F.Supp. 1522, 1526 (S.D.N.Y. 1991). The District Court rejected Kinko's claim that its use of the excerpts was fair use, and granted injunctive relief to the publishers. Id.
In essence, Plaintiffs argue that the coursepack cases should have guided the District Court's analysis in this case, because GSU cannot alter the fair use calculus simply by choosing to distribute course readings in an electronic rather than paper format. In making this argument, Plaintiffs invoke the "media neutrality" principle, which "mandates that the `transfer of a work between media does not alter the character of that work for copyright purposes.'" See Greenberg v. Nat'l Geographic Soc., 533 F.3d 1244, 1257 (11th Cir.2008) (en banc) (quoting N. Y. Times Co., Inc. v. Tasini, 533 U.S. 483, 502, 121 S.Ct. 2381, 2392, 150 L.Ed.2d 500 (2001)).
Plaintiffs' reliance on the media neutrality doctrine is misplaced. Congress established that doctrine to ensure that works created with new technologies, perhaps not in existence at the time of the Copyright Act of 1976, would qualify for copyright protection. See id. (citing 17 U.S.C. § 102(a) ("Copyright protection subsists... in original works of authorship fixed in any tangible medium of expression, now known or later developed...." (emphasis added))); see also H.R.Rep. No. 94-1476, at 52 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5665 ("This broad language is intended to avoid the artificial and largely unjustifiable distinctions ... under which statutory copyrightability in certain cases has been made to depend upon the form or medium in which the work is fixed."). The media neutrality doctrine concerns copyrightability and does not dictate the result in a fair use inquiry. Congress would not have intended this doctrine to effectively displace the flexible work-by-work fair use analysis in favor of a one dimensional analysis as to whether the case involves a transfer of a work between media.
Likewise, because the fair use analysis is highly fact-specific and must be performed on a work-by-work basis, see Cariou, 714 F.3d at 694, the coursepack cases provide guidance but do not dictate the results here, which must be based upon a careful consideration of the circumstances of the individual instances of alleged infringement involved in this case.
The first fair use factor is "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). The inquiry under the first factor has several facets, including (1) the extent to which the use is a "transformative" rather than merely superseding use of the original work and (2) whether the use is for a nonprofit educational purpose, as opposed to a commercial purpose. Peter Letterese & Assocs., 533 F.3d at 1309. "Before illumining these facets, however, we observe that the Supreme Court has cautioned against the use of the facets to create `hard evidentiary presumption[s]' or `categories of presumptively fair use.'" Id. (alteration in original) (citing Campbell, 510 U.S. at 584, 114 S.Ct. at 1174 ("[T]he mere fact that a use is educational and not for profit does not insulate it from a finding of infringement,
Our initial inquiry under the first factor asks whether Defendants' use is transformative, i.e., "whether the new work merely supersede[s] 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." Campbell, 510 U.S. at 579, 114 S.Ct. at 1171 (alteration in original) (citations omitted) (quotation marks omitted). For example, a parody transforms a work by appropriating elements of the work for purposes of comment or criticism, and thus "reflects transformative value because it `can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.'" Suntrust Bank, 268 F.3d at 1271 (quoting Campbell, 510 U.S. at 579, 114 S.Ct. at 1171). A nontransformative use, on the other hand, is one which serves the same "overall function" as the original work. Peter Letterese & Assocs., 533 F.3d at 1311 (quotation marks omitted).
Even verbatim copying "may be transformative so long as the copy serves a different function than the original work." Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.2007) (finding a search engine's copying of website images in order to create an Internet search index transformative because the original works "serve[d] an entertainment, aesthetic, or informative function, [whereas the] search engine transforms the image into a pointer directing a user to a source of information"); A.V. v. iParadigms, LLC, 562 F.3d 630, 640 (4th Cir.2009) (finding use of student papers in an online plagiarism detection database transformative because the database used the papers not for their original purpose as schoolwork, but rather to automatically detect plagiarism in the works of other student authors); Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d Cir.2006) (finding use by publishers of concert posters reproduced in full, although in reduced size, in a biography of a musical group transformative because the use was for historical and educational purposes, rather than advertising and informational purposes).
Allowing would-be fair users latitude for transformative uses furthers "the goal of copyright, to promote science and the arts." See Campbell, 510 U.S. at 579, 114 S.Ct. at 1171. This is because transformative works possess a comparatively large share of the novelty copyright seeks to foster. At the same time, transformative uses are less likely, generally speaking, to negatively impact the original creator's bottom line, because they do not "`merely supersede the objects of the original creation'" and therefore are less likely to "`supplant' the market for the copyrighted work [by] `fulfilling demand for the original.'" See Peter Letterese & Assocs., 533 F.3d at 1310 (alteration omitted) (quoting Campbell, 510 U.S. at 579, 588, 114 S.Ct. at 1171, 1176).
Here, Defendants' use of excerpts of Plaintiffs' works is not transformative. The excerpts of Plaintiffs' works posted on GSU's electronic reserve system are verbatim copies of portions of the original books which have merely been converted into a digital format. Although a professor may arrange these excerpts into a particular order or combination for use in a college course, this does not imbue the excerpts themselves with any more than a de minimis amount of new meaning. See Princeton University Press, 99 F.3d at 1389 ("[I]f you make verbatim copies of 95 pages of a 316-page book, you have not transformed the 95 pages very much — even if you juxtapose them to excerpts from other works.").
However, we must also consider under the first factor whether Defendants' use is for a nonprofit educational purpose, as opposed to a commercial purpose. "[T]he commercial or non-transformative uses of a work are to be regarded as `separate factor[s] that tend[ ] to weigh against a finding of fair use,' and `the force of that tendency will vary with the context.'" Peter Letterese & Assocs., 533 F.3d at 1309 (alteration in original) (quoting Campbell, 510 U.S. at 585, 114 S.Ct. at 1174). Indeed, the Supreme Court has recognized in dicta that nonprofit educational use may weigh in favor of a finding of fair use under the first factor, even when nontransformative. Campbell, 510 U.S. at 579 n. 11, 114 S.Ct. at 1171 n. 11 ("The obvious statutory exception to this focus on transformative uses is the straight reproduction of multiple copies for classroom distribution.").
Because "copyright has always been used to promote learning," Suntrust Bank, 268 F.3d at 1261, allowing some leeway for educational fair use furthers the purpose of copyright by providing students and teachers with a means to lawfully access works in order to further their learning in circumstances where it would be unreasonable to require permission. But, as always,
In the coursepack cases, Princeton University Press, 99 F.3d at 1389, and Basic Books, 758 F.Supp. at 1531-32, the first factor weighed against a finding of fair use when the nontransformative, educational use in question was performed by a forprofit copyshop, and was therefore commercial. In a more recent case, a district court refused to allow a commercial copyshop to sidestep the outcome of the coursepack cases by requiring its student customers to perform the photocopying themselves (for a fee) when assembling paper coursepacks from master copies held by the copyshop. Blackwell Publ'g, Inc. v. Excel Research Grp., LLC, 661 F.Supp.2d 786, 794 (E.D.Mich.2009). In all three instances, the court refused to allow the defendants, who were engaged in commercial operations, to stand in the shoes of students and professors in claiming that their making of multiple copies of scholarly works was for nonprofit educational purposes.
However, in both of the coursepack cases, the courts expressly declined to conclude that the copying would fall outside the boundaries of fair use if conducted by professors, students, or academic institutions. See Princeton University Press, 99 F.3d at 1389 ("As to the proposition that it would be fair use for the students or professors to make their own copies, the issue is by no means free from doubt. We need not decide this question, however, for the fact is that the copying complained of here was performed on a profit-making basis by a commercial enterprise."); Basic Books, 758 F.Supp. at 1536 n. 13 ("Expressly, the decision of this court does not consider copying performed by students, libraries, nor on-campus copyshops, whether conducted for-profit or not."). In Blackwell Publishing, the District Court noted that, conversely, "the fact that students do the copying does not ipso facto mean that a commercial use cannot be found." 661 F.Supp.2d at 793.
Furthermore, where we previously held that the first factor weighed against a finding of fair use in a case involving use that was nontransformative but educational, the use in question was commercial. Peter Letterese & Assocs., 533 F.3d at 1309-12 (finding that the first factor weighed against a finding of fair use in a case involving the verbatim use of copyrighted material in an instructional coursepack for use by the Church of Scientology, where defendants charged a fee or obtained a promissory note in exchange for the coursepacks and hence the use was for commercial purposes).
Thus, the question becomes whether Defendants' use of Plaintiffs' works is truly a nonprofit educational use under § 107(1), and if so, whether this places sufficient weight on the first factor scales to justify a finding that this factor favors fair use despite the nontransformativeness of Defendants' use.
GSU is a nonprofit educational institution. While this is relevant, our inquiry does not end there: we must consider not only the nature of the user, but the use itself. See Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 921-22 (2d Cir.1994) ("[A] court's focus should be on the use of the copyrighted material and not simply on the user, [although] it is overly simplistic to suggest that the `purpose and character of the use' can be fully discerned without considering the nature and objectives of the user.").
Defendants' use of Plaintiffs' works in the teaching of university courses is clearly for educational purposes. Nevertheless,
Under this line of reasoning, Defendants' educational use of Plaintiffs' works is a for-profit use despite GSU's status as a nonprofit educational institution, and despite the fact that GSU does not directly sell access to Plaintiffs' works on Eres and uLearn. Defendants "exploited" Plaintiffs' copyrighted material for use in university courses without "paying the customary price" — a licensing fee. Defendants profited from the use of excerpts of Plaintiffs' works — however indirectly — because GSU collects money from students in the form of tuition and fees (which students pay in part for access to ERes and uLearn) and reduces its costs by avoiding fees it might have otherwise paid for the excerpts.
However, this reasoning is somewhat circular, and hence of limited usefulness to our fair use inquiry. Of course, any unlicensed use of copyrighted material profits the user in the sense that the user does not pay a potential licenseing fee, allowing the user to keep his or her money. If this analysis were persuasive, no use could qualify as "nonprofit" under the first factor. Moreover, if the use is a fair use, then the copyright owner is not entitled to charge for the use, and there is no "customary price" to be paid in the first place.
Defendants' use of Plaintiffs' works does not provide GSU with a noneconomic but measurable professional benefit, such as an enhanced reputation. Contra Soc'y of Holy Transfiguration Monastery, 689 F.3d at 61. Although GSU students are likely pleased with the convenience of ERes and uLearn, there is no evidence that the presence of excerpts of Plaintiffs' works on these electronic reserve systems enhances GSU's reputation in any meaningful sense.
Ultimately, we agree with the Second Circuit's assessment that
Texaco, 60 F.3d at 922 (2d Cir.1994) (citations omitted).
Thus, we find that Defendants' use of Plaintiffs' works is of the nonprofit educational nature that Congress intended the fair use defense to allow under certain circumstances. Furthermore, we find this sufficiently weighty that the first factor favors a finding of fair use despite the nontransformative nature of the use.
The text of the fair use statute highlights the importance Congress placed on educational use. The preamble to the statute provides that fair uses may include "teaching (including multiple copies for classroom use), scholarship, or research" and the first factor singles out "nonprofit educational purposes." 17 U.S.C. § 107. The legislative history of § 107 further demonstrates that Congress singled out educational purposes for special consideration. In the years leading up to passage of the Copyright Act of 1976 (which introduced § 107), Congress devoted considerable attention to working out the proper scope of the fair use defense as applied to copying for educational and classroom purposes, going so far as to include in a final report the Classroom Guidelines developed by representatives of educator, author, and publisher groups at the urging of Congress. See H.R.Rep. No. 2237, at 59-66 (1966); S.Rep. No. 93-983, at 116-19 (1974); S.Rep. No. 94-473, at 63-65 (1975); H.R.Rep. No. 94-1476, at 66-70 (1976).
Notably, early drafts of § 107 did not include the parenthetical "including multiple copies for classroom use" or the specific direction to consider "whether [the] use is of a commercial nature or is for nonprofit educational purposes." See S. 3008, H.R. 11947, H.R. 12354, 88th Cong. (1st Sess.1964); S. 1006, H.R. 4347, H.R. 5680, H.R. 6831, H.R. 6835, 89th Cong. (1st Sess. 1965); S. 597, H.R. 2512, H.R. 5650, 90th Cong. (1st Sess.1967). This language was not inserted until one month before the passage of the Copyright Act of 1976. See S. 22, 94th Cong. (2d Sess.1976).
In sum, Congress devoted extensive effort to ensure that fair use would allow for educational copying under the proper circumstances and was sufficiently determined to achieve this goal that it amended the text of the statute at the eleventh hour in order to expressly state it. Furthermore, as described above, allowing latitude for educational fair use promotes the goals of copyright. Thus, we are persuaded that, despite the recent focus on transformativeness under the first factor, use for teaching purposes by a nonprofit, educational institution such as Defendants' favors a finding of fair use under the first factor, despite the nontransformative nature of the use.
Accordingly, we find that the District Court did not err in holding that the first factor favors a finding of fair use. Nevertheless, because Defendants' use of Plaintiffs' works is nontransformative, the threat of market substitution is significant. We note that insofar as the first factor is concerned with uses that supplant demand for the original, this factor is "closely related" to "[t]he fourth fair use factor, the effect on the potential market for the work." See Pac. & S. Co., 744 F.2d at
The second fair use factor, "the nature of the copyrighted work," 17 U.S.C. § 107(2), "calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied," Campbell, 510 U.S. at 586, 114 S.Ct. at 1175. The inquiry under the second factor generally focuses on two criteria. First, because works that are highly creative are closer to the core of copyright — that is, such works contain the most originality and inventiveness — the law affords such works maximal protection, and hence it is less likely that use of such works will be fair use.
A paradigmatic example of a creative work, the use of which will disfavor fair use under the second factor, is "[a] motion picture based on a fictional short story." Abend, 495 U.S. at 238, 110 S.Ct. at 1769. On the factual end of the spectrum, secondary use of a "bare factual compilation[]" favors fair use under the second factor. Campbell, 510 U.S. at 586, 114 S.Ct. at 1175 (citing Feist, 499 U.S. at 348-51, 111 S.Ct. at 1289-91). However, "[e]ven within the field of fact[ual] works, there are gradations as to the relative proportion of fact and fancy. One may move from sparsely embellished maps and directories to elegantly written biography." Harper & Row, 471 U.S. at 563, 105 S.Ct. at 2232 (quoting Robert A. Gorman, Fact or Fancy? The Implications for Copyright, 29 J. Copyright Soc'y 560, 561 (1982)).
The coursepack cases — which involved copying of academic works similar to those involved here — reached opposite conclusions as to the effect of the second factor.
Nevertheless, relevant precedent indicates the proper approach. In Harper & Row, a publisher holding exclusive rights to President Ford's unpublished memoirs sued The Nation magazine after The Nation published portions of the memoirs. 471 U.S. at 543, 105 S.Ct. at 2221-22. Although it focused on the unpublished nature of the memoir, the Court held that the second factor disfavored fair use in part because "The Nation did not stop at isolated phrases and instead excerpted subjective descriptions and portraits of public figures whose power lies in the author's individualized expression. Such use, focusing on the most expressive elements of the work, exceeds that necessary to disseminate the facts." Id. at 563-64, 105 S.Ct. at 2232.
In Peter Letterese & Associates, the holder of the copyright on a book about sales techniques sued several entities associated with the Church of Scientology after the entities used portions of the book in materials prepared for Church training courses. 533 F.3d at 1294-96. We held that the second factor was neutral — i.e., did not weigh for or against fair use — in part because, although the book
Id. at 1312-13.
Similarly, in Marcus v. Rowley, the Ninth Circuit considered a case involving the unauthorized copying of portions of the plaintiff's instructional booklet on the subject of cake decoration. 695 F.2d 1171, 1172 (9th Cir.1983). The court held that
Id. at 1176.
Here, the District Court held that "[b]ecause all of the excerpts are informational and educational in nature and none are fictional, fair use factor two weighs in favor of Defendants." Cambridge Univ. Press, 863 F.Supp.2d at 1242. We disagree.
The District Court found that "[s]ome of the books [at issue] are not merely descriptive; they contain material of an evaluative nature, giving the authors' perspectives
Defendants argue that GSU professors chose the excerpts of Plaintiffs' works for their factual content, not for any expressive content the works may contain, noting that several professors testified that if the use of a particular excerpt was not a fair use, they would have found another source. Of course, other professors testified that they chose particular excerpts because of the author's interpretative originality and significance. Regardless of whether GSU faculty chose the excerpts for their expressive or factual content, the excerpts were copied wholesale — facts, ideas, and original expression alike. Which aspect the secondary user was interested in is irrelevant to the disposition of the second factor.
Accordingly, we find that the District Court erred in holding that the second factor favored fair use in every instance. Where the excerpts of Plaintiffs' works contained evaluative, analytical, or subjectively descriptive material that surpasses the bare facts necessary to communicate information, or derives from the author's experiences or opinions, the District Court should have held that the second factor was neutral, or even weighed against fair use in cases of excerpts that were dominated by such material. That being said, the second fair use factor is of relatively little importance in this case.
The third fair use factor is "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." 17 U.S.C. § 107(3). "[T]his third factor examines whether defendants have `helped themselves overmuch' of the copyrighted work in light of the purpose and character of the use." Peter Letterese & Assocs., 533 F.3d at 1314 (quoting Campbell, 510 U.S. at 587, 114 S.Ct. at 1175). Thus, this factor is intertwined with the first factor.
"[T]his factor is [also] intertwined with the fourth factor and partly functions as a heuristic to determine the impact on the market for the original." Id. (footnote omitted). As we have explained,
In making this determination, we must consider "not only ... the quantity of the materials used, but ... their quality and importance, too." Campbell, 510 U.S. at 587, 114 S.Ct. at 1175; see also Harper & Row, 471 U.S. at 565, 105 S.Ct. at 2233 (holding that the third factor disfavored fair use because the defendant copied a qualitatively substantial portion of the original work — "the most interesting and moving parts of the entire manuscript" or "the heart of the book" — even though the defendants copied only approximately 300 words out of the 200,000 words in the plaintiffs' work (quotation marks omitted)).
Here, the District Court found that the third factor favored fair use in instances where Defendants copied no more than 10 percent of a work, or one chapter in case of a book with ten or more chapters. Cambridge Univ. Press, 863 F.Supp.2d at 1243. The District Court's blanket 10 percent-or-one-chapter benchmark was improper. The fair use analysis
Defendants argue that the District Court's 10 percent-or-one-chapter baseline served as a starting point only. However, this "starting point" in fact served as a substantive safe harbor in the third factor analysis, an approach which is incompatible with the prescribed work-by-work analysis. Even if we consider the baseline as a starting point only, application of the same non-statutory starting point to each instance of infringement is not a feature of a proper work-by-work analysis under the third fair use factor.
Defendants also argue that the District Court's 10 percent-or-one-chapter approach is supported by the record. Defendants' explain that a CCC white paper, Using Electronic Reserves: Guidelines and Best Practices for Copyright Compliance (2011), identifies "best practices" for electronic reserves, stating that electronic reserve materials should be limited to "small excerpts" and that "[m]ost experts advise using a single article or ... chapter of a copyrighted work...." See Defendants' Trial Ex. 906, at 2. However, even if we accept that the 10 percent-or-one-chapter approach represents a general industry "best practice" for electronic reserves, this is not relevant to an individualized fair use analysis.
Plaintiffs offer four additional critiques of the District Court's analysis under the third factor. First, Plaintiffs argue that the District Court erred in focusing its inquiry on whether the amount copied suited GSU's pedagogical purposes. This analysis, Plaintiffs contend, reflects a misplaced reliance on Campbell, in which the Supreme Court held that it was proper to allow a parodist — a transformative user — to use "at least enough" of the original work "to make the object of its critical wit recognizable." 510 U.S. at 588, 114 S.Ct. at 1176; see also Suntrust Bank, 268 F.3d at 1271. Such an analysis, Plaintiffs conclude, has no application in a case of nontransformative copying like this one.
Plaintiffs mischaracterize the holding of Campbell. Although Campbell involved a parody, the Supreme Court's statement in that case that the inquiry under the third factor is whether "the quantity and value of the materials used ... are reasonable in relation to the purpose of the copying" was not limited to the context of transformative uses. See 510 U.S. at 586, 114 S.Ct. at 1175 (citations omitted) (quotation marks omitted). Indeed, the Supreme Court acknowledged in Campbell that it had recognized that "the extent of permissible copying varies with the purpose and character of the use" in prior cases that did not involve transformative uses. Id. at 586-87, 114 S.Ct. at 1175 (citing Sony, 464 U.S. at 449-50, 104 S.Ct. at 792-93 (holding that reproduction of an entire work "does not have its ordinary effect of militating against a finding of fair use" as to home videotaping of television programs); Harper & Row, 471 U.S. at 564, 105 S.Ct. at 2232 ("[E]ven substantial quotations might qualify as fair use in a review of a published work or a news account of a speech" but not in a scoop of a soon-to-be-published memoir)). We have also previously held that this principle applies in the context
Second, Plaintiffs argue that the District Court erred in measuring the amount taken based on the length of the entire book even where the copied material was an independently authored chapter in an edited volume. Rather, Plaintiffs contend, the relevant "work" in the case of an edited volume is the chapter copied, not the entire book; to conclude otherwise would create the anomalous result that a work bound with other works in an edited volume would enjoy less copyright protection than if the same work were published in a journal. See Texaco, 60 F.3d at 926 (treating individual articles in a journal as discrete works of authorship for purposes of third factor analysis).
As noted earlier, the District Court declined to consider this argument because Plaintiffs raised it late in the proceedings. The decision whether to hear an argument raised late in litigation is squarely within the discretion of the District Court. See Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 230, 9 L.Ed.2d 222 (1962). In the parties' March 15, 2011, joint exhibit — the document, which was admitted into evidence, detailing the alleged instances of infringement which were to be the subject of the bench trial — Plaintiffs identified whole books as the subject of the infringement claims and calculated the percentages taken as the amount copied from the total number of pages in those books. In their pre-trial proposed Findings of Fact and Conclusions of Law, filed on May 17, 2011, Plaintiffs again calculated the percentages in this manner. Although the argument that individual chapters should constitute the whole work in edited volumes for the purposes of factor three "came up for the first time briefly during the trial, ... [i]t was not until Plaintiffs filed their post-trial Proposed Findings of Fact and Conclusions of Law that Plaintiffs'... theory was fleshed out." Cambridge Univ. Press, 863 F.Supp.2d at 1231.
Plaintiffs argue that Defendants had an opportunity to respond to the argument in their response to Plaintiffs' post-trial Proposed Findings of Fact and Conclusions of Law, and that the District Court identified no prejudice to Defendants. However, the bench trial was conducted based on the pre-trial filings, in which Plaintiffs' calculated the percentages in relation to whole works. We find that the District Court did not abuse its discretion in rejecting Plaintiffs' argument regarding chapters of edited compilations "on grounds of untimeliness and unfair surprise to the Defendants." Id.
Third, Plaintiffs argue that the copying permitted by the District Court exceeds the amounts outlined in the Classroom Guidelines.
Furthermore, although Plaintiffs characterize the amounts set forth in the Classroom Guidelines as "limits," the Classroom Guidelines were intended to suggest a minimum, not maximum, amount of allowable educational copying that might be fair use, and were not intended to limit fair use in any way:
H.R.Rep. No. 94-1476, at 68 (1976), reprinted in U.S.C.C.A.N. 5659, 5681. Thus, while the Classroom Guidelines may be seen to represent Congress' tentative view of the permissible amount of educational copying in 1976, we are not persuaded by the Plaintiffs' argument that the Classroom Guidelines should control the analysis under factor three in this case.
Finally, Plaintiffs argue that the District Court allowed excessive taking as a percentage of the entire book compared to the amounts held to be "over the line" in the coursepack cases. The District Court erred, Plaintiffs contend, in finding that because GSU's use was nonprofit and educational, "fair use factor one strongly favors Defendants and tends to push the amount of permissible copying toward a greater amount than" the amounts held to disfavor fair use in the coursepack cases. Cambridge Univ. Press, 863 F.Supp.2d at 1232. In Basic Books, the court found the fact that certain excerpts represented 5 to 14 percent of the whole work to weigh against the defendant, and the fact that other excerpts represented 16 to 28 percent of the whole work to "weigh heavily against [the] defendant." 758 F.Supp. at 1527-28. In Princeton University Press, the court found that takings ranging from 5 to 30 percent of the works in question weighed against fair use. 99 F.3d at 1391. Plaintiffs point out that the portions of Plaintiffs' works that the District Court held to favor fair use under the third factor are comparable to those held to disfavor fair use in the coursepack cases.
We first note that the coursepack cases are not binding authority on this Court. Furthermore, because the four factors must be "weighed together" and not "treated in isolation," Campbell, 510 U.S. at 578, 114 S.Ct. at 1171, it is appropriate for the District Court to take the educational purpose of the use into consideration when analyzing how much copying is permissible under the third factor. This must be done on a work-by-work basis in a case such as this. While this type of analysis necessarily precludes hard-and-fast evidentiary presumptions, the wholesale reproduction of an entire work will not generally be considered fair unless the use is highly transformative.
The fourth fair use factor is "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4). "We must consider two inquiries: (1) `the extent of the market harm caused by the particular actions of the alleged infringer,' and (2) `whether unrestricted and widespread conduct of the sort engaged in by the defendant[] would result in a substantially adverse impact on the potential market.'" Peter Letterese & Assocs., 533 F.3d at 1315 (alteration in original) (quoting Campbell, 510 U.S. at 590, 114 S.Ct. at 1177 (quotation marks omitted)). The adverse impact we are "primarily concerned [with] is that of market substitution." Id.; see also Harper & Row, 471 U.S. at 568, 105 S.Ct. at 2235 (explaining that the fourth factor is concerned with "use that supplants any part of the normal market for a copyrighted work" (quoting S.Rep. No. 94-473, at 65 (1975))). Furthermore, "[m]arket harm is a matter of degree, and the importance of [the fourth] factor will vary, not only with the amount of harm, but also with the relative strength of the showing on the other factors." Campbell, 510 U.S. at 590 n. 21, 114 S.Ct. at 1177 n. 21. Because Defendants' use is nontransformative and fulfills the educational purposes that Plaintiffs, at least in part, market their works for, the threat of market substitution here is great and thus the fourth factor looms large in the overall fair use analysis.
We agree with the District Court that the small excerpts Defendants used do not substitute for the full books from which they were drawn. "Plaintiffs offered no trial testimony or evidence showing that they lost any book sales in or after 2009 on account of any actions by anyone at Georgia State." Cambridge Univ. Press, 863 F.Supp.2d at 1217. Thus, the District Court did not err in finding that "Defendants' use of small excerpts did not affect Plaintiffs' actual or potential sales of books." Id. at 1236.
However, CCC's various programs for academic permissions — and Plaintiffs' own permissions programs — constitute a workable market through which universities like GSU may purchase licenses to use excerpts of Plaintiffs' works. Plaintiffs contend that, by failing to purchase digital permissions to use excerpts of Plaintiffs' works on ERes and uLearn, Defendants caused substantial harm to the market for licenses, and that widespread adoption of this practice would cause substantial harm to the potential market. Plaintiffs also argue that, even if a license for a digital excerpt of a work was unavailable, this should not weigh in favor of fair use because the copyright owner is not obliged to accommodate prospective users.
Defendants argue that, because permissions income for academic books represents a miniscule percentage of Plaintiffs' overall revenue, Defendants' practices have not caused substantial harm to the market for Plaintiffs works, and would not do so even if widely adopted. Defendants further argue that unavailability of licensing opportunities for particular works should weigh in favor of fair use.
We note that it is not determinative that programs exist through which universities may license excerpts of Plaintiffs' works. In other words, the fact that Plaintiffs have made paying easier does not automatically dictate a right to payment. "[A] copyright holder can always assert some degree of adverse [effect] on its potential licensing revenues as a consequence of the secondary use at issue simply because the copyright holder has not been paid a fee to permit that particular use." Texaco, 60 F.3d at 929 n. 17 (citations omitted). The goal of copyright is to stimulate the creation of new works, not to furnish copyright holders with control over all markets. Accordingly, the ability to license does not demand a finding against fair use.
Nevertheless, "it is sensible that a particular unauthorized use should be considered `more fair' when there is no ready market or means to pay for the use, while such an unauthorized use should be considered `less fair' when there is a
Plaintiffs argue that even though a use is less fair when licensing is readily available, it does not follow that a use becomes more fair if, for a legitimate reason, the copyright holder has not offered to license the work. Plaintiffs cite several cases which have found that the fourth factor weighs against fair use even though the copyright holder was not actively marketing the work in question because the secondary use negatively impacted the potential market for the work. See Balsley v. LFP, Inc., 691 F.3d 747, 761 (6th Cir. 2012), cert. denied, ___ U.S. ___, 133 S.Ct. 944, 184 L.Ed.2d 727 (2013) (finding that a magazine publisher had failed to rebut a presumption of market harm in a commercial context where the publisher published a photo in which plaintiffs had acquired copyright in order to prevent its dissemination, because plaintiffs' "current desire or ability to avail themselves of the market" was irrelevant to the question of potential market harm); Worldwide Church of God, 227 F.3d at 1119 (finding market harm even though the copyright holder had ceased distributing the copyrighted work ten years prior to the act of alleged infringement and had no concrete plans to publish a new version); Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc., 150 F.3d 132, 145-46 (2d Cir.1998) (finding that the fourth factor weighed against a defendant who published a book containing trivia questions about the plaintiff's copyrighted television program where the plaintiff "ha[d] evidenced little if any interest in exploiting [the] market for derivative works based on" the program, noting that "copyright law must respect that creative and economic choice"). We note that our own precedent also supports this theory in some circumstances. See Pac. & S. Co., 744 F.2d at 1496 (finding harm to the potential market for plaintiff's news broadcasts where a defendant videotaped the broadcasts and sold tapes to the subjects of the news reports because "[c]opyrights protect owners who immediately market a work no more stringently than owners who delay before entering the market" and so "[t]he fact that [the plaintiff] does not actively market copies of the news programs does not matter, for Section 107 looks to the `potential market' in analyzing the effects of an alleged infringement").
However, this reasoning need not dictate the result in this case, which concerns not the market for Plaintiffs' original works themselves or for derivative works based upon those works, but rather a market
An analogy is helpful. A publisher acts like a securities underwriter. A publisher determines the value of a work, which is set by the anticipated demand for the work. Thus, the greater the demand for the work — the greater the market — the more the publisher will pay the author of the work up front, and the more the publisher will endeavor to make the work widely available. If a publisher makes licenses available for some uses but not for others, this indicates that the publisher has likely made a reasoned decision not to enter the licensing market for those uses, which implies that the value of that market is minimal.
With regard to the works for which digital permissions were unavailable, Plaintiffs choose to enter those works into some markets — print copies of the whole work, or perhaps licenses for paper copies of excerpts — but not the digital permission market. This tells us that Plaintiffs likely anticipated that there would be little to no demand for digital excerpts of the excluded works and thus saw the value of that market as de minimis or zero. If the market for digital excerpts were in fact de minimis or zero, then neither Defendants' particular use nor a widespread use of similar kind would be likely to cause significant market harm. Of course, if publishers choose to participate in the market the calculation will change.
In its individual analysis under the fourth factor of each of the forty-eight works for which it found Plaintiffs had made a prima facie case of infringement, the District Court performed a sufficiently nuanced review of the evidence regarding license availability. Where the evidence showed that there was a ready market for digital excerpts of a work in 2009, the time of the purported infringements, the District Court found that there was small — due to the amount of money involved — but actual damage to the value of Plaintiffs' copyright.
Plaintiffs argue that the District Court erred by placing the burden on Plaintiffs to show that digital licenses for the particular works in question were reasonably available through CCC in 2009. Cognizant that fair use is an affirmative defense, the District Court kept the overall burden on Defendants to show that "no substantial damage was caused to the potential market for or the value of Plaintiffs' works" in order to prevail on the question of whether the fourth factor should favor fair use. Cambridge Univ. Press, 863 F.Supp.2d at 1237. However, the District Court found that because Plaintiffs were "advocates of the theory that the availability of licenses shifts the factor four fair use analysis in their favor ... it is appropriate for them to be called upon to show that CCC provided in 2009 reasonably efficient, reasonably priced, convenient access to the particular excerpts which are in question in this case." Id. Plaintiffs argue that this amounted to relieving the Defendants of their burden of proof on the fourth factor.
We disagree. Fair use is an affirmative defense, and the evidentiary burden on all four of its factors rests on the alleged infringer. See Campbell, 510 U.S. at 590, 114 S.Ct. at 1177. However, Plaintiffs — as publishers — can reasonably be expected to have the evidence as to availability of licenses for their own works. It is therefore reasonable to place on Plaintiffs the burden of going forward with the evidence on this question.
In effect, this creates a presumption that no market for digital permissions exists for a particular work.
Although the District Court did not articulate its approach to the evidentiary burden on license availability in exactly this manner, the District Court did essentially what we have described. The District Court required Plaintiffs to put on evidence as to the availability of digital permissions in 2009, and Plaintiffs provided such evidence for some of the works in question but not for others. For those seventeen works for which Plaintiffs presented no evidence that digital permissions were available, the District Court — noting that, because access was limited to particular classes, it was unlikely that Defendants' use would result in exposure of the works to the general public and so there was little risk of widespread market substitution for excerpts of the works — held that there was no harm to the actual or potential market. For those works for which Plaintiffs demonstrated that digital permissions were available, the District Court considered the evidence demonstrating that the actual harm to the value of Plaintiffs' copyright was minor (because the fees Defendants would have paid for a small number of licenses for the works in question amounted to a relatively small amount), but reasonably concluded that widespread conduct of the sort engaged in by Defendants would cause substantial harm.
Given the evidence in the record, it was reasonable for the District Court to find that a lack of direct evidence of availability indicated that licenses were unavailable. Cambridge's representative testified that Cambridge does not allow excerpts of certain categories of books to be licensed through CCC, including reference and language books (as several of the works at issue here are). Representatives of Oxford, Cambridge, and CCC testified, but did not explain whether digital licenses for excerpts were available in 2009 for the books at issue in this case.
The District Court engaged in a careful investigation of the evidence in the record, properly considered the availability of digital permissions in 2009, and appropriately placed the burden of going forward with the evidence on this issue on Plaintiffs. Accordingly, we find that the District Court did not err in its application of the fourth factor. However, because Defendants' copying was nontransformative and the threat of market substitution was therefore serious, the District Court erred by not affording the fourth factor additional weight in its overall fair use calculus.
The District Court enumerated two additional, purportedly non-statutory considerations which it held favored fair use: (1) that "[l]imited unpaid copying of excerpts will not deter academic authors from creating new academic works," and
The District Court's first additional consideration was more properly considered under the first fair use factor — "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). Nonprofit educational uses are more likely to be fair because they promote the ultimate aims of copyright — the creation and dissemination of knowledge. Both of these aims must be kept in mind when evaluating a claim of fair use. Thus, whether the limited unpaid copying of excerpts will deter academic authors from creating is relevant. Nevertheless, it is the publishers — not academic authors — that are the holders of the copyrights at issue here. Publishers — not authors — are claiming infringement. Thus, when determining whether Defendants' unpaid copying should be excused under the doctrine of fair use in this case, we are primarily concerned with the effect of Defendants' copying on Plaintiffs' incentive to publish, not on academic authors' incentive to write.
The District Court's second additional consideration may be divided into two findings. First, the District Court found that a slight diminution of Plaintiffs' permissions income caused by Defendants' fair use would not appreciably harm Plaintiffs' ability to publish scholarly works. However, this consideration is adequately dealt with under the fourth factor, which, as we have explained, asks whether the market harm caused by Defendants' unpaid copying will materially impair Plaintiffs' incentive to publish.
Second, the District Court found that that "it is consistent with the principles of copyright to apply the fair use doctrine in a way that promotes the dissemination of knowledge, and not simply its creation," and treated this as a basis to allow the slight diminution of Plaintiffs' permissions income caused by Defendants' unpaid copying. Cambridge Univ. Press, 863 F.Supp.2d at 1241. We agree with the proposition that applying fair use in a manner which promotes the dissemination of knowledge is consistent with the goals of copyright. See Golan v. Holder, ___ U.S. ___, 132 S.Ct. 873, 888, 181 L.Ed.2d 835 (2012) (explaining that the Progress of Science, which Congress is empowered to promote pursuant to the Copyright Clause, "refers broadly to the creation and spread of knowledge and learning" (emphasis added) (quotation marks omitted)). However, all unpaid copying could be said to promote the spread of knowledge, so this principal is not particularly helpful in "separating the fair use sheep from the infringing goats." See Campbell, 510 U.S. at 586, 114 S.Ct. at 1175. To the extent that it is relevant here, this consideration is more neatly dealt with under the first factor, which teaches that educational uses — which certainly promote the dissemination of knowledge — are more likely to be fair. See § 107(1).
Accordingly, we hold that the District Court erred by separating the following considerations from its analysis of the first and fourth factors: (1) whether limited unpaid
In sum, we hold that the District Court did not err in performing a work-by-work analysis of individual instances of alleged infringement in order to determine the need for injunctive relief. However, the District Court did err by giving each of the four fair use factors equal weight, and by treating the four factors mechanistically. The District Court should have undertaken a holistic analysis which carefully balanced the four factors in the manner we have explained.
The District Court did not err in holding that the first factor — the purpose and character of the use — favors fair use. Although Defendants' use was nontransformative, it was also for nonprofit educational purposes, which are favored under the fair use statute. However, the District Court did err in holding that the second fair use factor — the nature of the copyrighted work — favors fair use in every case. Though this factor is of comparatively little weight in this case, particularly because the works at issue are neither fictional nor unpublished, where the excerpt in question contained evaluative, analytical, or subjectively descriptive material that surpasses the bare facts, or derive from the author's own experiences or opinions, the District Court should have held that the second factor was neutral or even weighed against fair use where such material dominated.
With regard to the third factor — the amount used in relation to the copyrighted work as a whole — the District Court erred in setting a 10 percent-or-one-chapter benchmark. The District Court should have performed this analysis on a work-by-work basis, taking into account whether the amount taken — qualitatively and quantitatively — was reasonable in light of the pedagogical purpose of the use and the threat of market substitution. However, the District Court appropriately measured the amount copied based on the length of the entire book in all cases, declined to give much weight to the Classroom Guidelines, and found that the Defendants' educational purpose may increase the amount of permissible copying.
With regard to the fourth factor — the effect of Defendants' use on the market for the original — the District Court did not err. However, because Defendants' unpaid copying was nontransformative and they used Plaintiffs' works for one of the purposes for which they are marketed, the threat of market substitution is severe. Therefore, the District Court should have afforded the fourth fair use factor more significant weight in its overall fair use analysis. Finally, the District Court erred by separating two considerations from its analysis of the first and fourth fair use factors, as described above supra part III. D.5.
Because the District Court's grant of injunctive relief to Plaintiffs was predicated on its finding of infringement, which was in turn based on the District Court's legally flawed methodology in balancing the four fair use factors and erroneous application of factors two and three, we find that the District Court abused its discretion in granting the injunction and the related declaratory relief. Similarly, because the District Court's designation of Defendants as the prevailing party and consequent award of fees and costs were predicated on its erroneous fair use analysis, we find that the District Court erred in
Accordingly, we REVERSE the judgment of the District Court. We VACATE the injunction, declaratory relief, and award of fees and costs to Defendants, and REMAND for further proceedings consistent with this opinion.
SO ORDERED.
VINSON, District Judge, concurring specially:
It seems to me that the District Court's error was broader and more serious than the majority's analysis concludes, and I write separately to highlight some of those differences.
This case reveals the critical need to see the "big picture" when attempting to determine what constitutes fair use of copyrighted work. It also highlights how the temptation to apply traditional statutory interpretation principles to a common law concept can lead to serious error.
While copyright is a creature of statute, the doctrine of fair use has always been governed by judicially-created common law principles. See 4 Nimmer on Copyright § 13.05 (2014) ("Nimmer") (stating that fair use was, and remains, a "judge-made rule of reason"). The Copyright Act of 1909 (and earlier versions) did not even mention fair use, notwithstanding that it had been around since "the infancy of copyright protection[.]" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575-76, 114 S.Ct. 1164, 1169-70, 127 L.Ed.2d 500 (1994) (discussing early cases). When Congress enacted a new copyright statute in 1976, it recognized the existence of fair use (for the first time) in Section 107 of the Act, which provided that "fair use ... is not an infringement of copyright" and summarized the four non-exhaustive factors that courts should consider in analyzing claims of fair use: (1) the purpose of the use, (2) the nature of the work, (3) the size and significance of the copied portion, and (4) the effect of the use on the value or potential market for that work. 17 U.S.C. § 107(1)-(4). As the Supreme Court of the United States has observed, however:
Campbell, supra, 510 U.S. at 577, 114 S.Ct. 1164 (citations omitted). Thus, it is important to keep in mind that fair use analysis does not require conventional statutory interpretation or the mechanical application of a checklist; it is, instead, rooted in the "270-year-old tradition of judge-made law and in judicial common sense — the mortar of the common law." Pierre N. Leval, Nimmer Lecture: Fair Use Rescued, 44 UCLA L.Rev. 1449, 1454 (1997) ("Nimmer Lecture").
While Section 107 was well intended, judges have had difficulty applying statutory recognition to common-law adjudication, and this case presents a good example of that situation. Courts frequently focus on the word-bites of the statute instead of the fair use doctrine itself. As Judge Leval has bluntly described, there was "chaotic confusion that resulted from the statutory recognition" in 1976, and, as courts "looked for answers in the wrong
This case does not involve an individual using a single copyrighted work, nor does it involve a single course, a single professor, or even a one-time use of "multiple copies for classroom distribution." See Campbell, supra, 510 U.S. at 579 n. 11, 114 S.Ct. 1164. Nor, in my opinion, should it be confined to the seventy-four specific instances of infringement that were the focus during trial. Rather, this case arises out of a university-wide practice to substitute "paper coursepacks" (the functional equivalent of textbooks) that contained licensed copyrighted works with "digital coursepacks" that contained unlicensed copyrighted works. This was done for the vast majority of courses offered at GSU and, as will be seen, it was done primarily to save money.
(emphasis added). Thus, Defendants have the burden to show by a preponderance of the evidence why this aggregated use in electronic form is fair use — when the exact same use in paper form is not. In my view, they have not even come close to doing so. Plaintiffs' brief then goes on to cite two important cases in this area:
(emphasis added). The twice-emphasized stipulation referenced above — which is arguably the most meaningful fact in this case — specifically provided that: "GSU pays permissions fees when copyrighted content is used in hardcopy coursepacks." Thus, James Palmour (whose job at GSU was to arrange coursepacks and evaluate the materials included therein "to determine if copyright laws are violated or not") testified that, when he prepared paper coursepacks, "if anything was copyrighted I obtained the copyright permission and paid the royalties to the publishers...." Palmour Dep. at 16, 24-25, 30. He did this whenever the work had already been published in a book or journal because, in that situation, "I assume that it needs copyright permission" before it could be put in a paper coursepack. Id. at 30-31, 34. Notably, however, that same assumption was not made (and the permissions fees were not paid) when GSU moved to digital coursepacks, which (as Palmour explained) was done because they were "easier", "cheaper" and "convenient." Id. at 129, 134-35.
In short, GSU went from paper coursepacks (for which they had "obtained the copyright permission and paid the royalties to the publishers") to digital coursepacks (for which they did not), and they did this not because there was any real difference in the actual use but, rather, in large part to save money.
To the extent the majority concludes that reliance on the media neutrality doctrine is "misplaced", and that the Coursepack Cases are not controlling since they involved commercial copyshops, see Maj. Op. at 1260-61, 1263-64, I respectfully disagree. The media neutrality doctrine should not be limited to copyrightability, but, rather, should apply equally in a fair use analysis. There is no transformative technology transition here. The digital format is merely another way of displaying the same paginated materials as in a paper format and for the same underlying use. Electronic reproduction is faster, cheaper, and almost unlimited in its scope and duration, but there is no discernable difference in its use, purpose, and effect. And while the Coursepack Cases are, of course, not binding on us, I find their legal and factual rationale persuasive and would reverse for largely the same reasons set out in those decisions.
It appears that the majority finds that the first factor (i.e., the purpose of the use) favors a finding of fair use based primarily on the fact that GSU is a not-for-profit university using the copyrighted material for educational purposes. Neither churches, charities, nor colleges get a free ride in copyright, however. The test is ultimately the same for them as it is for everyone else: is the use "fair" under the specific circumstances? While I agree that educational use is an important factor to consider, and there is much to recommend in the majority's thoughtful analysis and detailed consideration of this issue, see Maj. Op. at 1261-67 — which stands in stark contrast to the District Court's perfunctory (two page) analysis
In Campbell, the Supreme Court expressly stated that the "central purpose" of the investigation under the first factor is to determine "whether the new work merely supersedes the objects of the original creation" or, instead, whether it adds "something new" with an additional purpose or different character. See 510 U.S. at 578-79, 114 S.Ct. 1164 (citations, quotation marks, and alterations omitted); see also Nimmer, supra, § 13.05[A][1][b]. The Supreme Court went on to state in this context that "the mere fact that a use is
As for the second factor (i.e., the nature of the work), the District Court held that it weighs in favor of Defendants "because all of the excerpts are informational and educational in nature and none are fictional[.]" See Cambridge Univ. Press v. Becker, 863 F.Supp.2d 1190, 1242 (N.D.Ga.2012). This conclusion was error, as the majority opinion holds. Admittedly, the "nature of the work" encompasses a huge spectrum of considerations, often bridging the field of copyrighted works. Characterizing the nature of poetic works, visual art, or musical compositions and performances is quite different from that of written textual materials. For some works, the contested use also may affect the "nature" of the work. A proper analysis of the second factor should not focus on whether a work is fiction or nonfiction; rather, in my opinion, the focus should be on the originality and creativity of the work and its value to the public (or, as here, to the academic community).
And lastly, with respect to the fourth factor (i.e., the effect of the use on the value or potential market for that work), there are two inquiries: (1) the extent of the market harm caused by the conduct of the alleged infringer, and (2) whether such conduct — if unrestricted and widespread — would result in a substantially adverse impact on the potential market for the original. See Campbell, supra, 510 U.S. at 590, 114 S.Ct. 1164. "In particular, the adverse effect with which fair use is primarily concerned is that of market substitution." Peter Letterese & Assocs., Inc. v. World Institute of Scientology Enters., Int'l, 533 F.3d 1287, 1315 (11th Cir.2008). The threat of market substitution in this case, as the majority opinion rightly notes, is severe. However, after noting that digital licenses were not available for some of the copyrighted works at issue, the majority opinion concludes "the District Court held that the fourth factor weighted in favor of fair use. We find that the District Court's analysis under the fourth factor was correct...." See Maj. Op. at 1278.
I disagree and am instead persuaded by the Plaintiffs' arguments, which highlight multiple legal and factual errors in the District Court's analysis of the fourth factor.
Princeton Univ. Press, supra, 99 F.3d at 1387. One could substitute "universities" for "copyshops" in the above quoted passage (which, as I indicated earlier, would be appropriate since the underlying use is the same in both cases) and would have to reach the same conclusion.
Therefore, I would go further than does the majority and conclude that both the District Court's methodology and its analysis were flawed. The Defendants' use fails under any objective common law "big picture" adjudication of fair use and also fails on a work-by-work analysis under three of the four factors (while the remaining factor is either neutral or weighs against Defendants). It has been said that fair use is best and most precisely explained by the following paraphrase of the Golden Rule: "`Take not from others to such an extent and in such a manner that you would be resentful if they so took from you.'" See Nimmer, supra, at § 13.05[A] (citation omitted). If GSU or the individual defendants held copyrights for which other universities had always sought — and paid for — permission to copy and provide to students on paper, I am confident they would be "resentful" if those universities (in an effort to save money) just stopped paying the permissions fees and instead provided the same or similar materials by digital means. GSU's use of Plaintiffs' copyright protected works without compensation was, in a word, unfair.
I thus concur with the decision to reverse and remand this case.
(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.
Id. § 106.
In a letter dated March 8, 1976, the three groups delivered to Congress an "Agreement on Guidelines for Classroom Copying in Not-For-Profit Educational Institutions with Respect to Books and Periodicals," which came be known as the Classroom Guidelines. Id., reprinted in 1976 U.S.C.C.A.N. 5659, 5681. The Classroom Guidelines, which are reproduced in the legislative history of the 1976 Act, begin by stating that their "purpose ... is to state the minimum and not the maximum standards of educational fair use under Section 107." Id. at 68, reprinted in 1976 U.S.C.C.A.N. 5659, 5681.
Under the terms of the Classroom Guidelines, teachers may make individual copies of excerpts of certain works for use in teaching, research, and class preparation, and may make multiple copies of works for classroom use so long as the copying meets the conditions of "brevity," "spontaneity," and "cumulative effect." Id., reprinted in 1976 U.S.C.C.A.N. 5659, 5682. "Brevity" places strict word count limits on allowable copying, such as "an excerpt from any prose work of not more than 1,000 words or 10 percent of the work." Id. "Spontaneity" provides that "[t]he inspiration and decision to use the work and the moment of its use for maximum teaching effectiveness are so close in time that it would be unreasonable to expect a timely reply to a request for permission." Id. at 69, reprinted in 1976 U.S.C.C.A.N. 5659, 5682. "Cumulative effect" places caps on the total amount of copying permissible under the Classroom Guidelines. Id., reprinted in 1976 U.S.C.C.A.N. 5659, 5683. The Classroom Guidelines also contain other provisions, including prohibitions on charging students for copied materials beyond the cost of copying, copying that substitutes for the purchase of books and other publications, copying the same material in multiple terms, and copying that "substitute[s] for anthologies, compilations or collective works." Id. at 69-70, reprinted in 1976 U.S.C.C.A.N. 5659, 5683.
"The [Classroom] [G]uidelines were designed to give teachers direction as to the extent of permissible copying and to eliminate some of the doubt which had previously existed in this area of the copyright laws.... [T]hey are not controlling on the court." Marcus v. Rowley, 695 F.2d 1171, 1178 (9th Cir.1983).
Whatever persuasive value the Classroom Guidelines may possess, we must keep in mind that they (1) were drafted by partisan groups, (2) "state the minimum and not the maximum standards of educational fair use under Section 107", and (3) adopt the type of "hard evidentiary presumption[s]" regarding which types of use may be fair that the Supreme Court has since repeatedly warned against. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584, 114 S.Ct. 1164, 1174, 127 L.Ed.2d 500 (1994). Indeed, the sentences immediately preceding the mechanistic "brevity," "spontaneity," and "cumulative effect" provisions illustrate the tentative nature of the groups' recommendations:
H.R.Rep. No. 94-1476 at 67 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5681.
The Second Circuit's approach in Cariou v. Prince, 714 F.3d 694 (2d Cir.2013) illustrates this point nicely. Cariou involved a relatively unknown photographer, Patrick Cariou; Richard Prince, a world famous appropriation artist; and the Gogosian Gallery in New York. Cariou spent six years taking photographic portraits of Rastafarians and landscape portraits of Jamaica. Cariou v. Prince, 784 F.Supp.2d 337, 344 (S.D.N.Y.2011). He then compiled these images into a book entitled Yes, Rasta. Id. Prince made a collage entitled Canal Zone out of 35 images from Cariou's Yes, Rasta collection, and ultimately completed a series of 30 Canal Zone paintings based on that collage. Id. at 343-45. Cariou sued Prince for copyright infringement. Id. at 353. Prince claimed each of his works constituted fair use. Id. The District Court evaluated each work individually and granted Cariou's motion for summary judgment. Id. at 355. The Second Circuit, however, held that 25 of Prince's Canal Zone paintings made fair use of Cariou's photographs and remanded the remaining five alleged instances of infringement to the District Court to consider each work more closely. Cariou, 714 F.3d at 708.
We need not rule on whether such uses could ever be transformative, because the question is not before us. The District Court found that the works at issue in this case are targeted for use, at least in part, in the university classroom. Cambridge Univ. Press, 863 F.Supp.2d at 1211 n. 15. Because this finding is not clearly erroneous, we will not disturb it. Thus, Defendants' use of excerpts of Plaintiffs' works in university courses is for the same purpose — or one of the purposes, insofar as some of Plaintiffs' works may also be meant for other purposes — as Plaintiffs' original works, and we need not consider the alternative scenarios amici suggest. Furthermore, we note that even if an individual work may be more in the vein of a research piece, the overall purpose of the works in question is nevertheless educational.
As to the fictional nature of a work however, the ground between the "paradigmatic example of a creative work" and the "bare factual compilation" is treacherous. This is so because courts who tread upon it must parse the pernicious idea/expression dichotomy to determine just how expressive a work is. Though, as mentioned supra note 25, the second statutory fair use factor refers to the nature of the work beyond the initial copyrightability inquiry, copyrightability cases illustrate the difficulty one encounters when attempting to separate idea from expression.
For example, Judge Learned Hand once wrote in a copyright case involving a movie that was allegedly based on a play: "Upon any work ... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.... [T]here is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ideas, to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can." Nichols v. Universal Pictures, Corp., 45 F.2d 119, 121 (2d Cir.1930) (emphasis added); see also Bleistein v. Donaldson Lithographic Co., 188 U.S. 239, 251, 23 S.Ct. 298, 47 L.Ed. 460 (1903) (Holmes, J.) ("It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside the narrowest and most obvious of limits."); Mannion v. Coors Brewing Co., 377 F.Supp.2d. 444, 459 (S.D.N.Y.2005) (noting "little is gained from attempting to distinguish an unprotectable idea from its protectable expression in a photograph or [any] other work of visual art"); Rebecca Tushnet, Worth a Thousand Words: The Image of Copyright, 125 Harv. L.Rev. 683, 702 (2012) ("The very excessive, worth-a-thousand-words quality of pictures may make them too unstable for courts accustomed to looking for meaning in words. With texts, by contrast, courts often feel more in control: courts have many standardized tools to interpret text, not least of all the rules of statutory and contractual construction. Those rules might be, in fact, indeterminate and manipulable, but they feel predictable and rational. For example, Judge Learned Hand's classic explanation of copyright's idea/expression dichotomy [in Nichols] acknowledged that the distinction between the two is inherently arbitrary, but he was nonetheless perfectly comfortable applying it to written texts such as plays and screenplays.").
Nevertheless, because Defendants' use of Plaintiffs' works is nontransformative and hence the threat of market substitution is severe, it is appropriate in this instance to afford relatively great weight to the fourth factor in the overall fair use analysis.
However, the fair use analysis must be performed on a work-by-work basis. Campbell, 510 U.S. at 577, 114 S.Ct. at 1170. As such, the District Court had to examine specific instances of infringement in order to determine whether prospective relief was warranted, and what shape that relief should take. In deciding those individual cases, the availability of licensing at the time of an alleged infringement — not at some undefined time in the future — is the relevant evidence.
Plaintiffs also complain that they were not notified at trial that they were required to show license availability for 2009 in particular. However, Plaintiffs were aware that the trial was to be conducted on the basis of the individual instances of purported infringement taking place in 2009 that were enumerated in the March 15, 2011, joint document. Thus, Plaintiffs were — or should have been — aware that the relevant evidentiary question was whether a market existed at the time of the purported infringements.
We note that Plaintiffs could have framed their case differently by putting on evidence of copying at other universities in order to show the negative impact a finding of fair use would have on the existing market for the works in question. Because this is not the case before us, however, we need not speculate as to its outcome
We are not convinced that Sony stands for such a proposition. The portion of Sony Defendants cite discusses a presumption that commercial uses are not fair use and noncommercial uses are fair use. See Sony, 464 U.S. at 449-51, 104 S.Ct. at 792-93. The Supreme Court has since clarified that such presumptions have no place in the fair use analysis. See Campbell, 510 U.S. at 584, 114 S.Ct. at 1174. Campbell's treatment of Sony suggests that Sony's discussion of presumptions and burdens is better viewed as a discourse on the common sense inferences that may be drawn regarding the threat of market substitution in cases of nontransformative use (although at the time of Sony the Court had not yet adopted that term).
Furthermore, in Campbell, the Supreme Court stated unequivocally that "[s]ince fair use is an affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets." 510 U.S. at 590, 114 S.Ct. at 1177 (footnotes omitted). Defendants contend that the Campbell court was dealing with commercial use and did not disapprove Sony's shifting of the burden in noncommercial cases. However, we find that the Court's unqualified statement that fair use is an affirmative defense in its discussion of the fourth factor indicates that the Court did not intend for the overall burden of proof to be reversed.
Palmour Dep. at 135 (emphasis added).
