© 2019 Neil Turkewitz

The Pendulum of Transformativeness and The Zen of Copyright Repair: Judge Pierre Leval and Jon Baumgarten Discuss Fair Use

by Neil Turkewitz

Two years ago at the London Book Fair, two heavyweights in the world of fair use, Judge Leval, author of famous and influential articles on fair use and leading fair use decisions in Texaco, Google Books, and most recently, ReDigi, and Jon Baumgarten, counsel for successful plaintiffs in leading fair use decisions in Texaco, Kinkos and Michigan Document, and former General Counsel of the Copyright Office, agreed to a debate on fair use.

The full transcript of their debate is here. With their kind permission, and in the hope of making their interesting debate more accessible to a broader segment of the public, I have provided some key excerpts below. While much of their discussion focused on Judge Leval’s decision in Google Books, their discussion touched on critical issues of copyright policy, and as much as possible, I have focused on those aspects of their comments with the broadest policy implications. I do encourage everyone to read the transcript in full — 30 pages may seem a bit daunting, but it reads easily and it’s nice to see their playful exchanges and their manifest mutual respect which is far too uncommon in most present debates.

DEBATE ON FAIR USE

CHARLES CLARK MEMORIAL LECTURE 15th March 2017

JON BAUMGARTEN, ESQ AND THE HON. PIERRE LEVAL

Hon. Pierre Leval: “No question this is a scary time for content owners. Digital technologies can easily make protected matter freely available to the world. At the same time, however, new technologies can considerably improve the utilization of copyright matter without significant impairment of the rights protected by the copyright. The mission of fair use is to make the appropriate distinctions. My mission here is to demonstrate to you that fair use is not the enemy of content owners — not your enemy.”

The Supreme Court [in its 1985 decision in Harper & Row v The Nation] explained that harm to the rightsholder’s legitimate expectation of copyright revenues was the most significant factor in the fair use evaluation. That harm was unquestionably present in that case and determinative of the outcome. The importance to the public of the defendant’s revelation was rejected as a justification, at least for the circumstance where the book was on its way to publication and the taking deprived the owner of substantial revenues. It was not so clear how this factor would have been treated if the rightsholder had instead been intent on suppressing the original text rather than publishing it. And the fact that the defendant’s taking was of only 300 words out of a whole book could not justify the taking when those 300 words were what the public was the most eager to read.”

“A decade later the Supreme Court decided the case of Campbell vs Acuff-Rose, with a magnificent opinion, giving broad, systematic guidance on how to approach the subject. The explanation the Court gave focused on copyright’s two basic objectives; the enrichment of public knowledge and financial incentivisation to authors to create. Campbell essentially explains that the fair use zone lies in the circumstance where those two objectives are not at cross-purposes; the enrichment of public knowledge should not justify the fair use defense if it is accomplished by significant impairment of the rightsholder’s legitimate entitlement to profit from the distribution of the work. The opinion refines the issue of purpose and character of the copying work, which the statute specifies as the first factor. The more the copying work exhibits what the Supreme Court called a transformative purpose — in other words, the more it seeks to communicate a message different from the message of the original such as criticism of the original author or of the original author’s work or serves a different sort of a purpose from an original — the more likely it is that the copy serves public knowledge without interfering with the author’s exclusive entitlement to market their work.”

And in connection with Google Books, Judge Leval remarked that “If, instead of making digital copies, Google had employed six million elves to scour the texts of the books and furnish to searchers the same information as they can get by a keystroke, there would have been no question of infringement. The mere fact that Google supplies that information through making a digital copy, as opposed to employing six million elves, does not convert the lawful provision of information into infringement.”

He closed by observing “In conclusion I say to you, to an audience which I assume to be an audience of content owners and rightsholders, fair use is not your enemy. It is solicitous of your rights. In cases like Google Books indeed I would say that it is your very good friend, because it brings your books to the attention of the people who want to read them. I yield to Jon Baumgarten — who will tell you how wrong everything I have said is. Thank you.”

Jon Baumgarten: “Let me say one thing quickly in immediate rebuttal of Judge Leval’s opening. I do not believe that the publishing community in the United States considers fair use to be its enemy. As only one example, publishers of historical fiction, histories, biographies and the like thrive in and require a healthy fair use environment. In fact the publishing community was largely responsible for the legislative expansion of fair use in the United States with respect to unpublished works.”

Expressing his concern that Google Books:

1- ignored the independence of the reproduction right from that of the distribution right;

2-failed to properly take into account certain evidence of potential licensing which would have established the potential for conflict with the economic interests of authors; and

3-placed undue reliance on transformativeness which might expand the scope of misappropriation through an expansive reading of the decision,

Jon argued that: “Unwarranted extension of and misplaced reliance on Google Books will certainly surface in many venues — — ongoing and future “mass digitization” deliberations, treaty and trade agreement negotiations and dispute settlements, and national and regional attempts to review, revise and otherwise restate copyright laws. You must remain alert to discover, pre-empt, and counter them.

For the foregoing reasons I have not dismissed the Google Books decision, as some others have, as simply a one-off or as sui generis. Similarly I am not much comforted by so-called opt-out privileges that Google has reportedly offered to publishers. They are not material to the court’s decisions or to those aspects that trouble me, and raise their own concerns as well. Opt-outs turn copyright law upside down, encouraging widespread unauthorized reproduction in many contexts, subject only to post-hoc discovery, objection and removal; they do not promise compensation, but do hinder continued development of collective licensing and enhanced individualized permissions methods; and they invoke and reinforce the unfortunate but well-known attitude of “take first and negotiate later, if caught” — - a recognized tactic of mass infringers.”

“Similarly, with respect to Judge Leval’s interesting analogy a few minutes ago, Google simply did not engage an army of millions of elves to extract or accumulate data or information either for itself or its search customers; it did reproduce and make a permanent, repeatedly reference-able collection or library of entire copyrighted expressions. The difference in copyright principle is fundamental. Because the unlicensed collection might be later used for data, “information” or snippet extraction or analytics should not exculpate the making of the collection or copying of works any more than one or a legion of scholars’ use of data or information from published or closely held pirated textbooks would bless the actions of the pirate. Indeed, even if the elf army had gathered and accumulated not discrete data, but a collection of entire copyright works or meaningful segments for later exploitation by Google and its customers, it would have no more relevance to what Google Books actually does than the long-rejected analogy between copying or scanning of works and a scholar’s making of handwritten notes. And at least if coordinated, it would remain infringing notwithstanding dispersal of the copying.”

On a more fundamental level, Jon stressed that “without implicating additional questions of moral rights or personal privacy, I believe that copyright law does serve ends other than avoiding product substitution or conferring compensation. These include both objectives of commerce, preference, and taste, such as according control over sequencing and windowing and avoidance of market saturation; and more abstract notions of fairness, justice, unfair enrichment, and property. I suspect that in this area Judge Leval and I have a rather basic disagreement; and I concede that in the United States the judicial pendulum swings rather strongly in his direction. But the nice thing about pendulums is that at some point, they swing back (and lack extraterritorial effect).”

He closes with some fundamental observations: “Courts have extended the notion of transformative use to one favoring the defendant’s new “purpose” in copying, where neither a new or changed work was created. I believe that this expansion of fair use is flawed as a matter of policy because it ignores copyright law’s inherent focus on and encouragement of original creative expression. It opens the fair use doctrine far too broadly, and is too indefinite and susceptible to manipulation and contrivance… However, I believe there is little reason in copyright policy or Constitutional design to turn unauthorized copies of creative works into conscripted, uncompensated, raw material or fodder for such dealings. With today’s commercial premium and entrepreneurial emphasis on technological utility to present and exploit “new business models” and new ideas for “repurposing” what has gone before, it is not at all difficult to see the objective of copyright law being undone rather than enhanced by this change in focus.”

Judge Leval, with the final word in this post (which seems only fitting since he is, after all, Judge Leval!) responded, “The right of authors’ to profit from their writing is central to copyright law. Jon suggests that I focused excessive attention on whether the use by Google was transformative. But the Google opinion focused even more on whether there was harm to the author’s economic interest in the copyright. The Supreme Court said in the Nation case that this is the most important thing, There was no negative impact on the legitimate entitlement of author to profit…. The Google opinion was decided according to the same principles as the Texaco opinion which Jon has told me he very much admired. He appeared as Counsel in that case, He was very happy with the result and I was happy with his arguments! Google Books was decided on the same principles, but its different facts required a different result.”