Copyright and Fair Use in Legal Proceedings

The unauthorized copying of software may spur claims of copyright infringement; the downloading of copyrighted music from file-sharing websites may prompt an infringement suit; or the online posting of copyrighted materials without permission may justify the transmittal of a takedown notice to a website operator. Beyond these common infringements, however, is the inclusion of copyrighted works in legal filings with courts and arbitration panels. In such cases, an attorney or party will rarely obtain authorization from the copyright holder prior to submitting papers containing excerpts of copyrighted works. While this practice rarely results in a dispute, it presents interesting questions of copyright law, namely, whether a litigant may invoke the “fair use” doctrine to reproduce copyrighted materials for use as exhibits in judicial or quasi-judicial proceedings without first securing the permission of the copyright holder.

This article discusses recent decisions regarding the use of copyrighted material in legal proceedings and the applicability of the fair use defense to allegations of infringement.

The Fair Use Doctrine

The Copyright Act's “bundle of exclusive rights,” which include reproduction, performance, distribution, and preparation of derivative works, is subject to a list of statutory defenses to infringement, namely, the exception for fair use provided in 17 U.S.C. ' 107. The fair use defense permits the use of copyrighted works without the copyright owner's consent under certain situations. The defense encourages and allows the development of new ideas that build on earlier ones, thus providing a necessary counterbalance to the copyright law's goal of protecting creators' work product. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1163 (9th Cir. 2007). Congress listed numerous examples of the sort of activities courts might regard as fair use, such as reproduction for criticism, comment, news reporting, scholarship, or research, as well as “reproduction of a work in legislative or judicial proceedings or reports.” See 17 U.S.C. ' 107; House Committee on the Judiciary, H.R. Rep. No. 94-1476 (1976).

In applying the statutory fair use factors, the factors are weighed collectively and applied on a case-by-case basis. The factors are: 1) the purpose and character of the use (including whether such use is of a commercial nature and to what extent the new work is “transformative”); 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value of the copyrighted work. In the digital age, new technologies have compelled courts to apply the fair use factors to novel situations, such as the creation of digital thumbnails in a search engine image search [Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1163 (9th Cir. 2007)], an online anti-plagiarism service that compares student papers to available Internet content [A.V. v. iParadigms, LLC, 2009 WL 1015145 (4th Cir. Apr. 16, 2009)], and the posting of an entire news article by a nonprofit organization for educational purposes [Righthaven, LLC v. Jama, 2011 WL 1541613 (D. Nev. Apr. 22, 2011)].

Submissions in Legal Proceedings

There have been only a handful of courts that have addressed fair use in the context of evidentiary submissions in judicial proceedings, with the vast majority of courts having found fair use. Generally speaking, where the use of the copyrighted material in a judicial proceeding does not exploit the material for its intrinsic or intended use, courts have found that litigants have made fair use of the material. See, e.g., Tavory v. NTP, Inc., 495 F. Supp. 2d 531 (E.D. Va. 2007) (reproduction of copyrighted source code for the purposes of litigating a patent infringement action is fair use).

Several years ago, the Tenth Circuit, in Shell v. DeVries, 2007 WL 4269047 (10th Cir. Dec. 6, 2007) (unpublished), found that the unauthorized reproduction of website pages for use in motion practice in an unrelated litigation was fair use, despite website terms that forbade any copying without prior permission and the payment of a $5,000 per page license fee. The appeals court affirmed the dismissal of the plaintiff's copyright claim, finding no evidence that the defendants used the materials for their intrinsic purpose, (i.e., written commentary meant to generate licensing revenue). The court declined to hold that the limited, non-commercial use of copyrighted materials for use in judicial proceedings was per se fair use, though the court acknowledged the Ninth Circuit had previously held that the use of copyrighted materials in court proceedings constitutes fair use as long as users do not reproduce works where judicial proceedings are one of the intended markets of the copyrighted work. See Jartech v. Clancy, 666 F.2d 403 (9th Cir. 1982) (finding fair use where defendants made abbreviated copies of adult movies for use as evidence in a nuisance abatement proceeding).

In another matter, Bond v Blum, 317 F.3d 385 (4th Cir. 2003), the defendants introduced a copy of the plaintiff's previously circulated, copyrighted manuscript into evidence in a state child-custody proceeding to prove that the plaintiff's household was an unsuitable domicile for children. The salacious manuscript described how the plaintiff, when he was 17 years old, planned the brutal murder of his father, misled the police about his mental state, received leniency in juvenile court, and recovered the proceeds of his father's estate, all without remorse. Applying the fair use factors, the district court held that the defendants' use of the work was fair use because it was non-commercial and the litigants were not merely seeking to exploit the copyrighted material without paying the customary price. The court also noted that use of the copyrighted material in legal proceedings, even the entire manuscript, did not undermine the protections granted by the Copyright Act and had “absolutely zero” effect on the potential market for the copyrighted work. Indeed, the lower court observed: “Ironically, if anything, [the defendants' use] increases the value of the work in a perverse way ' .”

Most recently, in Hollander v. Steinberg, 2011 WL 1252414 (2d Cir. Apr. 5, 2011) (summary order), an individual brought suit against two attorneys who attached copies of his online essays in support of legal papers filed in two separate proceedings. The Second Circuit affirmed the lower court's dismissal of the plaintiff's copyright infringement claims, finding that the defendants' submissions constituted fair use as a matter of law because the essays were submitted to evince the workings of the plaintiff's state of mind, and such non-commercial use could not realistically be viewed as negatively impacting the market for the writings. In concluding that the plaintiff failed to offer any evidence that defendants “usurped the market” for the essays, the court noted that “it is highly unlikely that potentially interested readers would even be aware of the essays' presence in a court file, let alone choose to acquire copies by the cumbersome methods of visiting a courthouse to make copies or using PACER.”

While nearly all of the reported decisions have found that submission of a copyrighted work in judicial proceedings was fair use, at least one court ruled that the use of copyrighted photographs in a court proceeding was not. In Images Audio Visual Productions, Inc. v. Perini Bldg. Co., Inc., 91 F. Supp.2d 1075 (E.D. Mich. 2000), the plaintiff held copyrights for aerial photographs of a construction site, which were taken as an evidentiary record of progress in the event of a dispute. When a dispute arose and proceeded to arbitration, the construction company needed extra copies of the prints, but refused to pay the plaintiff an additional licensing fee. In ruling that the construction company did not make fair use of the photographs that it had submitted to the arbitrator, the court distinguished “between copyrighted works that happen to capture information that proves relevant to subsequent litigation, and works that are intended to capture such information, specifically for the purpose of litigation.” Id. at 1086. The court ruled that where judicial proceedings are one of the intended markets of the copyrighted work, the copyright holder is entitled to exercise control over the use within this market and “the fair use doctrine does not require the wholesale abandonment of copyright protection at the courthouse door.” Id.

Indeed, the Perini case can be distinguished from the aforementioned decisions because the copyrighted photographs at issue were produced specifically for potential litigation, and the defendant used them for precisely the purpose the photos themselves were intended to serve. See Perini, 91 F. Supp. 2d at 1081. But see United Transportation Union Local 1745 v. City of Albuquerque, 2009 WL 2573815 (10th Cir. Aug. 21, 2009) (there is no legal authority requiring an attorney to pay a fee to a court reporter for a copy of a transcript the reporter did not make but, rather, the attorney legally obtained from another source by independent means; court reporters do not have a copyright in a mere transcription of others' statements during a court proceeding).

This article first appeared in The Intelletual Property Strategist, a sister publication of this newsletter.

Richard Raysman is a partner at Holland & Knight LLP and a co-author of Computer Law: Drafting and Negotiating Forms and Agreements (Law Journal Press). Jonathan P. Mollod is an attorney with the firm.

The unauthorized copying of software may spur claims of copyright infringement; the downloading of copyrighted music from file-sharing websites may prompt an infringement suit; or the online posting of copyrighted materials without permission may justify the transmittal of a takedown notice to a website operator. Beyond these common infringements, however, is the inclusion of copyrighted works in legal filings with courts and arbitration panels. In such cases, an attorney or party will rarely obtain authorization from the copyright holder prior to submitting papers containing excerpts of copyrighted works. While this practice rarely results in a dispute, it presents interesting questions of copyright law, namely, whether a litigant may invoke the “fair use” doctrine to reproduce copyrighted materials for use as exhibits in judicial or quasi-judicial proceedings without first securing the permission of the copyright holder.

This article discusses recent decisions regarding the use of copyrighted material in legal proceedings and the applicability of the fair use defense to allegations of infringement.

The Fair Use Doctrine

The Copyright Act's “bundle of exclusive rights,” which include reproduction, performance, distribution, and preparation of derivative works, is subject to a list of statutory defenses to infringement, namely, the exception for fair use provided in 17 U.S.C. ' 107. The fair use defense permits the use of copyrighted works without the copyright owner's consent under certain situations. The defense encourages and allows the development of new ideas that build on earlier ones, thus providing a necessary counterbalance to the copyright law's goal of protecting creators' work product. Perfect 10, Inc. v. Amazon.com, Inc. , 508 F.3d 1146, 1163 (9th Cir. 2007). Congress listed numerous examples of the sort of activities courts might regard as fair use, such as reproduction for criticism, comment, news reporting, scholarship, or research, as well as “reproduction of a work in legislative or judicial proceedings or reports.” See 17 U.S.C. ' 107; House Committee on the Judiciary, H.R. Rep. No. 94-1476 (1976).

In applying the statutory fair use factors, the factors are weighed collectively and applied on a case-by-case basis. The factors are: 1) the purpose and character of the use (including whether such use is of a commercial nature and to what extent the new work is “transformative”); 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value of the copyrighted work. In the digital age, new technologies have compelled courts to apply the fair use factors to novel situations, such as the creation of digital thumbnails in a search engine image search [ Perfect 10, Inc. v. Amazon.com, Inc. , 508 F.3d 1146, 1163 (9th Cir. 2007)], an online anti-plagiarism service that compares student papers to available Internet content [ A.V. v. iParadigms, LLC , 2009 WL 1015145 (4th Cir. Apr. 16, 2009)], and the posting of an entire news article by a nonprofit organization for educational purposes [Righthaven, LLC v. Jama, 2011 WL 1541613 (D. Nev. Apr. 22, 2011)].

Submissions in Legal Proceedings

There have been only a handful of courts that have addressed fair use in the context of evidentiary submissions in judicial proceedings, with the vast majority of courts having found fair use. Generally speaking, where the use of the copyrighted material in a judicial proceeding does not exploit the material for its intrinsic or intended use, courts have found that litigants have made fair use of the material. See, e.g. , Tavory v. NTP, Inc. , 495 F. Supp. 2d 531 (E.D. Va. 2007) (reproduction of copyrighted source code for the purposes of litigating a patent infringement action is fair use).

Several years ago, the Tenth Circuit, in Shell v. DeVries, 2007 WL 4269047 (10th Cir. Dec. 6, 2007) (unpublished), found that the unauthorized reproduction of website pages for use in motion practice in an unrelated litigation was fair use, despite website terms that forbade any copying without prior permission and the payment of a $5,000 per page license fee. The appeals court affirmed the dismissal of the plaintiff's copyright claim, finding no evidence that the defendants used the materials for their intrinsic purpose, (i.e., written commentary meant to generate licensing revenue). The court declined to hold that the limited, non-commercial use of copyrighted materials for use in judicial proceedings was per se fair use, though the court acknowledged the Ninth Circuit had previously held that the use of copyrighted materials in court proceedings constitutes fair use as long as users do not reproduce works where judicial proceedings are one of the intended markets of the copyrighted work. See Jartech v. Clancy , 666 F.2d 403 (9th Cir. 1982) (finding fair use where defendants made abbreviated copies of adult movies for use as evidence in a nuisance abatement proceeding).

In another matter, Bond v Blum, 317 F.3d 385 (4th Cir. 2003), the defendants introduced a copy of the plaintiff's previously circulated, copyrighted manuscript into evidence in a state child-custody proceeding to prove that the plaintiff's household was an unsuitable domicile for children. The salacious manuscript described how the plaintiff, when he was 17 years old, planned the brutal murder of his father, misled the police about his mental state, received leniency in juvenile court, and recovered the proceeds of his father's estate, all without remorse. Applying the fair use factors, the district court held that the defendants' use of the work was fair use because it was non-commercial and the litigants were not merely seeking to exploit the copyrighted material without paying the customary price. The court also noted that use of the copyrighted material in legal proceedings, even the entire manuscript, did not undermine the protections granted by the Copyright Act and had “absolutely zero” effect on the potential market for the copyrighted work. Indeed, the lower court observed: “Ironically, if anything, [the defendants' use] increases the value of the work in a perverse way ' .”

Most recently, in Hollander v. Steinberg, 2011 WL 1252414 (2d Cir. Apr. 5, 2011) (summary order), an individual brought suit against two attorneys who attached copies of his online essays in support of legal papers filed in two separate proceedings. The Second Circuit affirmed the lower court's dismissal of the plaintiff's copyright infringement claims, finding that the defendants' submissions constituted fair use as a matter of law because the essays were submitted to evince the workings of the plaintiff's state of mind, and such non-commercial use could not realistically be viewed as negatively impacting the market for the writings. In concluding that the plaintiff failed to offer any evidence that defendants “usurped the market” for the essays, the court noted that “it is highly unlikely that potentially interested readers would even be aware of the essays' presence in a court file, let alone choose to acquire copies by the cumbersome methods of visiting a courthouse to make copies or using PACER.”

While nearly all of the reported decisions have found that submission of a copyrighted work in judicial proceedings was fair use, at least one court ruled that the use of copyrighted photographs in a court proceeding was not. In Images Audio Visual Productions, Inc. v. Perini Bldg. Co., Inc. , 91 F. Supp.2d 1075 (E.D. Mich. 2000), the plaintiff held copyrights for aerial photographs of a construction site, which were taken as an evidentiary record of progress in the event of a dispute. When a dispute arose and proceeded to arbitration, the construction company needed extra copies of the prints, but refused to pay the plaintiff an additional licensing fee. In ruling that the construction company did not make fair use of the photographs that it had submitted to the arbitrator, the court distinguished “between copyrighted works that happen to capture information that proves relevant to subsequent litigation, and works that are intended to capture such information, specifically for the purpose of litigation.” Id. at 1086. The court ruled that where judicial proceedings are one of the intended markets of the copyrighted work, the copyright holder is entitled to exercise control over the use within this market and “the fair use doctrine does not require the wholesale abandonment of copyright protection at the courthouse door.” Id.

Indeed, the Perini case can be distinguished from the aforementioned decisions because the copyrighted photographs at issue were produced specifically for potential litigation, and the defendant used them for precisely the purpose the photos themselves were intended to serve. See Perini, 91 F. Supp. 2d at 1081. But see United Transportation Union Local 1745 v. City of Albuquerque, 2009 WL 2573815 (10th Cir. Aug. 21, 2009) (there is no legal authority requiring an attorney to pay a fee to a court reporter for a copy of a transcript the reporter did not make but, rather, the attorney legally obtained from another source by independent means; court reporters do not have a copyright in a mere transcription of others' statements during a court proceeding).

This article first appeared in The Intelletual Property Strategist, a sister publication of this newsletter.

Richard Raysman is a partner at Holland & Knight LLP and a co-author of Computer Law: Drafting and Negotiating Forms and Agreements (Law Journal Press). Jonathan P. Mollod is an attorney with the firm.