Re: Re: Fair Dealing / Fair Use

At 1:05 PM -0500 2/13/06, John T. Mitchell wrote:
>On Feb 10, 2006, at 12:00 PM, J. Noble wrote:
>
>>At 6:50 PM -0500 2/8/06, Steven Jamar wrote:
>>
>>>Their is a nice theoretical issue as to whether the right way to
>>>say it is that there is an infringement, but the infringer is
>>>protected by a privilege, or whether there is no infringement at
>>>all.
>>>
>>
>>If it is privileged, it isn't infringement. The issue is whether
>>the unauthorized use is infringing or non-infringing. Some uses are
>>non-infringing because they are outside the limitations upon the
>>exclusive rights granted to the copyright holder (eg., first sale);
>>while other uses are non-infringing because they are within the
>>privileges granted to the user (fair use).
>>
>
>While I agree 100% with your first sentence, I'm not sure I follow
>the distinction in the rest of the paragraph.

We don't have any disagreement on the law or the allocation of the burden. My only point was that there is no such thing, conceptually, as a privileged infringement. The "theoretical issue," framed as a distinction between privileged infringement and non-privileged infringement, is unhelpful, and even misleading; but you can re-characterize the theoretical issue that Prof. Jamar alluded to as a reflection of the distinction between a limitation that circumscribes the author's exclusive rights, and a privilege that overrides or survives the author's exclusive rights. That distinction not only sheds light on the reasons behind the allocation of the burden of production/proof, but also reflects the difference between uses that are objectively non-infringing (limitation) vs. subjectively non-infringing (privilege); whether a complaint can be dismissed for failure to state claim (limitation), or requires summary judgment (privilege); even whether a complaint for declaratory judgment of non-infringement can (privilege) or cannot (limitation) satisfy the case or controversy requirement.

In my opinion, although I gather Prof. Jamar disagrees, the distinction also goes a long way toward determining the availability of Rule 11 sanctions for filing a frivolous complaint. In fact, it should be almost impossible to get nailed with sanctions on the complaint if you truthfully allege ownership of a valid copyright and unauthorized copying by the defendant. Even after the defendant answers, raises the fair use defense, and the motion to dismiss is converted to a motion for summary judgment before it's granted, the complaint doesn't violate 11(b)(2)-(4) if it states a claim. You might be able to conjure an example of an unauthorized use that is so patently protected by the anticipated fair use defense (e.g. a book review that quotes a paragraph from a 200-page novel) that the claim can be sanctioned as vexatious under Rule 11(b)(1). But unless you've got some evidence of an "improper motive" (the plaintiff only sued the reviewers who trashed his novel), you don't have a basis for Rule 11 sanctions on the complaint if there is a prima facie claim of infringement. It might be possible to conjure a hypothetical prima facie claim, filed without an improper motive, in defiance of an obviously fatal fair use defense, which is impervious to any non-frivolous argument for the reversal of governing caselaw construing sec. 107, but my imagination fails me.

In contrast, if the complaint claims infringement based on a use that is not within the author's exclusive rights pursuant to the statutory limitations on those rights, then the claim is neither warranted by the law nor supported by the evidence. You can only hope opposing counsel is gracious enough to point out the limitation on your client's copyright, and allow your graceful withdrawal before he files a motion to dismiss and sanction the frivolous complaint.

John Noble

>All rights (section 106) are, under the express language of the
>Copyright Act, "Subject to sections 107-122." (And the Supreme
>Court has underscored this.) Accordingly, all copyrights are
>"subject to" both the fair use right (Section 107) and the first
>sale doctrine (both a a doctrine AND as codified in Section 109).
>
>Fair use is pretty much required by the First Amendment, so fair use
>rights are both statutory (and superior to copyrights insofar as
>Section 107 is concerned) and a constitutional right (insofar as the
>Supreme Court has made it clear that it is a constitutional
>requirement to have some degree of fair use).
>
>The first sale doctrine originated as a limitation on the copyright
>holder (e.g., the 1908 case declaring that the copyright gave no
>right to control resale pricing of books) and was eventually
>recognized as a right conferred upon the owner of a lawfully made
>copy (the current codification in Section 109, which describes it as
>an entitlement to do something over the objection of the copyright
>owner).
>
>I suspect that the main reason fair use gets described as a defense
>is that (apart from copyright owner bias), as a practical matter, it
>was historically impossible to prevent fair use, so the
>controversies only arose after someone had made the use, and was
>sued. Today, thanks to digital engineering, it is quite possible
>for copyright owners to infringe upon the fair use rights of others
>by various feats of engineering, so logically, anyone whose right of
>fair use is impaired by the copyright owner should have a right of
>action. Thus, if one is sue for copyright infringement, I
>agree that the plaintiff would bear the burden of proving it is
>infringing, which includes the burden of eliminating the fair use
>"defense" if raised (though the defendant would have the burden of
>coming forward with evidence of fair use). But if a plaintiff sued
>a copyright owner for a declaratory judgment of fair use, or for an
>injunction against the copyright owner's prevention of fair use,
>then it would seem that the burden would be on the plaintiff to
>prove that the copyright owner was indeed unlawfully preventing fair
>use, including the burden of proving fair use.
>
>John
>____________
>
>John T. Mitchell
><http://interactionlaw.com>http://interactionlaw.com
Received on Tue Feb 14 2006 - 22:00:31 GMT