Fair Use Factors Improperly Given Equal Weight in Copyright Infringement Case: Eleventh Circuit | Practical Law

Fair Use Factors Improperly Given Equal Weight in Copyright Infringement Case: Eleventh Circuit | Practical Law

In Cambridge University Press v. Patton, the US Court of Appeals for the Eleventh Circuit, ruling that the district court erroneously gave equal weight to the copyright fair use factors, reversed a district court judgment that individual employees and officers of Georgia State University were liable for copyright infringement and vacated the lower court's grant to the plaintiff publishing houses of declaratory and injunctive relief.

Fair Use Factors Improperly Given Equal Weight in Copyright Infringement Case: Eleventh Circuit

by Practical Law Intellectual Property & Technology
Published on 21 Oct 2014 • USA (National/Federal)
In Cambridge University Press v. Patton, the US Court of Appeals for the Eleventh Circuit, ruling that the district court erroneously gave equal weight to the copyright fair use factors, reversed a district court judgment that individual employees and officers of Georgia State University were liable for copyright infringement and vacated the lower court's grant to the plaintiff publishing houses of declaratory and injunctive relief.
On October 17, 2014, in Cambridge University Press v. Patton, the US Court of Appeals for the Eleventh Circuit reversed the district court's judgment that the defendant individuals had infringed the copyrights of plaintiff Cambridge University Press and two other plaintiff publishers by causing excerpts of these publishers' works to be posted online for use by Georgia State University students and professors (Nos. 12-14676, -15147, (11th Cir. Oct. 17, 2014)). Ruling that the district court abused its discretion in adopting a legally flawed equal weighting of the copyright fair use factors, the Eleventh Circuit vacated the district court's grant of an injunction and declaratory relief in favor of Cambridge and remanded the case for the reconsideration of the defendants' copyright fair use defense.

Background

The plaintiff copyright owners (Cambridge) in this action are three publishing companies specializing in academic works. The defendants are individual members of the board of regents and officials of Georgia State University (GSU), a non-profit educational institution. GSU maintained online systems containing excerpts of the plaintiffs’ works for use by students and professors. GSU also paid permission fees for copyright excerpts included in the hard copy coursepacks assembled and sold by the GSU Bookstore.
Cambridge sued the defendants for direct, contributory and vicarious copyright infringement in the US District Court for the Northern District of Georgia and requested injunctive relief. The defendants claimed the fair use defense under the Copyright Act based on GSU's use of the works for educational, nonprofit purposes (see 17 U.S.C. § 107). Both parties moved for summary judgment. After several rounds of discovery and a bench trial, the district court granted GSU's motion for summary judgment on Cambridge's contributory infringement claim. Cambridge then filed a revised list claiming 74 individual instances of infringement relating to 64 separate works.
After considering these alleged infringements, the district court issued an order:
  • Finding that GSU had infringed five of the 74 instances of alleged infringements and that the remaining 69 instances of copying were excused by GSU's fair use.
  • Awarding GSU attorneys' fees and costs as the prevailing party, but granting Cambridge limited declaratory and injunctive relief barring the defendants from engaging in further infringement.
Noting there was no precedent for applying the fair use defense to a nonprofit college's or university's excerpting of copyrighted works for a nonprofit educational purpose, the district court weighed the four fair use factors equally against each other and found fair use whenever at least three of the four factors favored GSU.
Cambridge appealed the district court's ruling and argued that the district court erred in:
  • Its application of the fair use factors and consequently finding the fair use defense applied in all but five of the instances of alleged infringement.
  • Awarding the defendants' attorneys' fees and costs because, Cambridge contested, the district court should have considered the infringement claims as a whole instead of on a work-by-work analysis.

Outcome

On appeal, after reviewing the district court's copyright infringement and fair use analyses, the Eleventh Circuit held that the district court:
  • Correctly performed a work-by-work analysis of individual instances of alleged infringement for determining the appropriateness of injunctive relief.
  • Erred in mechanically applying the fair use factors by giving each of the four factors equal weight.
The Eleventh Circuit clarified that courts should not necessarily give equal weight to all the fair use factors because one or more factors may vary in importance depending on the case. After establishing the proper methodology for applying the fair use factors, the Eleventh Circuit proceeded to weigh these factors in light of the relevant facts.

Purpose and Character of the Use

The Eleventh Circuit agreed with the district court's findings that GSU:
  • Did not make transformative use of these works, but rather, merely posted verbatim copies or portions of them.
  • Used the excerpts for the same intrinsic purpose served by Cambridge's works, as reading material for university students.
However, the Eleventh Circuit ruled that these considerations were outweighed by GSU's use of the works as a nonprofit, educational institution for non-commercial, teaching purposes and concluded that this first factor therefore favored a finding of fair use. In so deciding the court emphasized Congress's intent that the fair use defense allow for educational copying under proper circumstances like those presented in this case.

Nature of the Copyrighted Works

The Eleventh Circuit found the district court erred in finding this second factor favored fair use in every instance. The Eleventh Circuit noted that, in weighing this factor, courts should note that a finding of fair use is disfavored when the allegedly infringed work is either:
  • Highly original, expressive or creative rather than factual or informational.
  • Unpublished.
Because all the works in this case were published, the district court focused only on the creative/factual distinction and found this factor in the defendants' favor because all the excerpts were of an informational rather than fictional nature. The Eleventh Circuit disagreed, pointing out that GSU professors engaged in wholesale copying of the excerpts, including facts, ideas and original expression.
The Eleventh Circuit ruled, therefore, that the district court erred in holding that the second factor favored fair use in every instance of the defendants' infringement. The court reasoned that the district court should have instead held that the second fair use factor was neutral or even weighed against fair use in instances where the excerpts either:
  • Contain evaluative, analytical or subjectively descriptive material rather than bare facts.
  • Express the author's experiences or opinions.
The Eleventh Circuit concluded that, even taking these factors into account, the second fair use factor remains of relatively little importance in this case.

Amount and Substantiality of the Portion Used

Concerning the third fair use factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, the Eleventh Circuit ruled that the district court erred in applying a blanket 10 percent-or-one-chapter standard. The Eleventh Circuit counseled that courts should weigh this factor on a case-by-case/work-by-work basis, evaluating not only the quantity of the copied materials but also their quality and importance in light of the nature of the work and the threat that the materials will reduce demand for the original work in the market.
Notably, the Eleventh Circuit distinguished the so-called "coursepack" cases, noting that:

Effect on the Potential Market

In its review of the district court's analysis of the fourth fair use factor, the Eleventh Circuit reasoned that:
  • The proper focus was on whether GSU's use, considering whether other actors also acted similarly, would cause substantial economic harm that would eventually frustrate the purposes of copyright by materially impairing Cambridge's incentive to publish the work.
  • Although the defendants bore the burden of proof on establishing a fair use defense, the burden of going forward with evidence of the availability of licenses to the excerpted works should properly rest with the Cambridge plaintiffs, which, as publishers of these works, had superior access to this evidence.
Taking into account these and other considerations, the Eleventh Circuit concluded that the district court also erred in not giving the fourth fair use factor additional weight because GSU's nontransformative use of Cambridge's works presented a serious threat of market substitution.

Overall Assessment

Weighing the four factors in the required holistic analysis, the Eleventh Circuit found that the district court:
  • Correctly found the purpose and character of the use favors fair use.
  • Misapplied the analysis of the nature of the copyrighted work and should have found this factor neutral or against fair use.
  • Correctly measured the amount copied based on the length of the entire book, but erred in its 10 percent-or-one-chapter benchmark.
  • Erred for not affording the fourth factor, effect on potential market, more significant weight under the circumstances.
Given the district court's flawed application of the fair use factors, the Eleventh Circuit reversed the district court's judgment and vacated its grant to Cambridge of an injunction and related declaratory relief.

Practical Implications

This case provides further clarification on how courts consider the fair use defense where the alleged copyright infringement is made by a nonprofit, educational institution for non-commercial, educational purposes. Also, Eleventh Circuit plaintiffs facing a defendant asserting the fair use defense should be mindful of the evidentiary burden of persuasion concerning the availability of licenses and the effect of this consideration in the courts' analyses of potential market harm.