Whether Government Reproduction of Copyrighted Materials is a Noninfringing "Fair Use"

• Court: Department of Justice Office of Legal Counsel
• Decided: April 30, 1999
• Status: Published

Opinion

Whether Government Reproduction of Copyrighted Materials is a Noninfringing “ Fair Use”

Although governm ent reproduction o f copyrighted m aterial for governm ental use w ould in m any co n ­ texts be a noninfringing fair use under section 107 o f the C opyright A ct o f 1976, such governm ent reproduction o f copyrighted m aterial does not invariably qualify as a “ fair use ”

April 30, 1999

M e m o r a n d u m O p in io n f o r t h e G e n e r a l C o u n s e l D epa rtm en t o f C o m m erce

You have requested an opinion from this Office on a legal question raised in connection with an attempt by the Copyright Clearance Center, Inc. (“ CCC” ) to negotiate licenses with the Department of Commerce and other federal govern­ ment agencies, pursuant to which such agencies would, in exchange for a fee, obtain permission to reproduce certain copyrighted materials by photocopying.' See Letter for Dawn E. Johnsen, Acting Assistant Attorney General, Office of Legal Counsel, from Andrew J. Pincus, General Counsel, Department of Com­ merce at 1 (June 23, 1998) (“ Pincus Letter” ). You inform us that a “ key factor in our decision whether such negotiations [with the CCC] even are appropriate is whether there are any circumstances under which the Copyright Act might require a government agency to obtain such a license: if a license is never nec­ essary, there would be no reason to consider entering into negotiations with the CCC, or with individual authors of works.” Id. Accordingly, you have asked for our opinion on the following question: “ whether a government agency ever is required to secure either permission or licensing before making unauthorized reproduction and use of materials that are protected by copyright law, or whether all government reproduction and use of such materials per se qualifies for the ‘fair use’ exception from the obligations of the Copyright Act.” Id. You further assert that “ [t]here appears to be substantial disagreement within the government with-respect to this issue.” Id. In particular, you suggest that the Commercial Litigation Branch of the Department of Justice’s Civil Division may have con­ veyed to certain agencies the view that “ virtually all photocopying for government use is permitted under the fair use doctrine,” and that that view of the Commercial

‘ The CCC, a nonprofit consortium, or “ clearing house,” established in 1977, acts as an agent for participating publishers. Under one of the CCC’s offered services, a user pays a flat fee, in exchange for which it receives a blanket annual license to make photocopies for internal use of any copyrighted material contained in any o f the works registered with the CCC. The license fee is based on a limited photocopying survey that accounts for the license’s employee population and the copying fees for the journals regularly copied by that licensee Upon payment of the fee, the licensee is authorized for a specified term to make unlimited numbers of photocopies, for internal use, from CCC-registered publications The revenue that the CCC derives from the licensee then is allocated among the publishers that have registered publications with the CCC, with the CCC retaining certain service charges See American Geophysical Union v. Texaco, Inc., 802 F. Supp 1, 7 -8 (S.D N.Y 1992) (discussing this CCC licensing practice), a jfd , 60 F.3d 913 (2d C ir 1994), cert, dismissed, 516 U.S. 1005 (1995)

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Litigation Branch was “ based upon the decision in Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973), a f f d by an equally divided Court, 420 U.S. 376 (1975).” Id. at 2. As we explain below, while government reproduction of copyrighted material for governmental use would in many contexts be noninfringing because it would be a “ fair use” under section 107 of the Copyright Act of 1976, 17 U.S.C. § 107 (1994), there is no “ per se” rule under which such government reproduction of copyrighted material invariably qualifies as a fair use.2 It is important to note, however, that we have been unable to discern any disagreement within the federal government on this specific question: To our knowledge, no agency of the execu­ tive branch has argued, or advised, that government copying is per se a fair use. In particular, the Department o f Justice did not urge such a categorical rule in the Williams & Wilkins litigation, see infra note 15 (brief for the United States in the Supreme Court did not dispute that photocopying by the government may in some circumstances constitute copyright infringement); and, to our knowledge, the Department has not thereafter proffered any arguments, nor provided any advice, inconsistent with the views expressed in that brief.3 We do not, in this opinion, reach any conclusions about the circumstances under which government agencies should negotiate to obtain photocopying licenses. We caution, however, that a general practice of government agencies entering into licensing agreements in which they pay licensing fees for uses that are fair may, over time, undermine the government’s ability to argue successfully that such uses are fair. For this and other reasons, government agencies may wish to ensure that, if they do negotiate licensing arrangements, such arrangements cover only those government photocopying practices that otherwise would, in fact, be infringing. In Part I of this opinion, we provide some background on the fair use doctrine. In Part II, we review the case law regarding government photocopying and fair use, as well as Congress’s enactment of the Copyright Act of 1976, and conclude that government photocopying o f copyrighted materials does not invariably qualify as a fair use. Finally, in Part III, we provide some guidance on the factors that an agency should consider in determining whether a particular photocopying prac­ tice would be a fair use and whether to negotiate a license with respect to par­ ticular photocopying practices.

2 In framing the particular question you have asked us to consider, you refer to “ unauthorized reproduction and use o f materials that are protected by copyright law.” Pincus Letter at 1. The bulk o f your letter and supporting materials, however, indicates that your inquiry specifically concerns “ photocopying for government u s e ” Id at 2 Accordingly, we will in this opinion focus, not on all potential federal government uses of copyrighted materials, but instead, on government photocopying o f copyrighted materials for internal government use. We note, in particular, that this opinion does not specifically consider the circumstances under which it would be a fair use for an agency to republish copyrighted materials in government publicauons or in publicly available databases. 3 Indeed, a Department o f Energy memorandum that you provided as an attachment to your letter indicates that the Commercial Litigation Division of the Department o f Justice has informed the Department of Energy that, in its view, som e cases o f government photocopying likely would not be fair uses. See Memorandum for Jim Chafin and All Field Offices, from Paul A G ottlieb, Assistant G eneral Counsel for Technology Transfer and Intellectual Property, U nited States Department of Energy, Re: Copyright Clearance Center at 2 (May 23,1995).

88 Whether Government Reproduction o f Copyrighted Materials is a Noninfringing “Fair Use'

I. The Fair Use Doctrine

Article I, Section 8 of the Constitution empowers Congress to “ promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” U.S. Const, art. I, § 8, cl. 8. Pursuant to that power, Congress enacted the Copy­ right Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 (1976) (codified as amended at 17 U.S.C. §101 et seq. (1994)) (the “ Copyright Act” or the “ 1976 Act” ). Section 106 of the Copyright Act provides, inter alia, that the owner of a copy­ right under Title 17 of the United States Code “ has the exclusive rights . . . to reproduce the copyrighted work in copies,” and to “ authorize” such reproduc­ tion. 17 U.S.C. § 106(1) (1994). Those “ exclusive rights,” however, are “ [sjubject to” limitations codified in “ sections 107 through 120” of the 1976 Act. Id. § 106. For present purposes, the most important of those limitations is found in section 107 of the Copyright Act, id. § 107. That section, which is entitled “ Limitations on exclusive rights: Fair use,” provides, in pertinent part:

Notwithstanding the provisions of section[] 106 . . ., the fair use of a copyrighted work, including such use by reproduction in copies . . ., for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational pur­ poses;

(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.

Section 107’s “ fair use” limitation on copyright, and the particular factors enumerated in that section, reflect and incorporate a longstanding common law doctrine. See Harper & Row, Publishers, Inc. v. The Nation Enters ., 471 U.S. 539, 549 (1985). From the “ infancy of copyright protection,” courts have found it necessary to provide some opportunity for fair use of copyrighted materials in order “ to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science

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and useful Arts.’ ” Cam pbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994). Before enactment of the 1976 Act, however, the fair-use doctrine was “ exclu­ sively [a] judge-made doctrine.” Id. at 576. When it codified the fair use doctrine in section 107 of the 1976 Act, “ Congress meant ‘to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way’ and intended that courts continue the common-law tradition of fair use adjudication.” Id. at 577 (quoting H.R. Rep. No. 94-1476, at 66 (1976) ( “ House Report” ), reprinted in 1976 U.S.C.C.A.N. 5659, 5679; S. Rep. No. 94-473, at 62 (1975) ( “ Senate Report” )); accord H arper & Row, 471 U.S. at 554.4 As noted above, the fair use doctrine, like the copyright protections that it quali­ fies, is necessary in order “ to fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful Arts.’ ” Campbell, 510 U.S. at 575; see also, e.g., H arper & Row, 471 U.S. at 545 ( “ copyright is intended to increase and not to impede the harvest of knowledge” ). As the Supreme Court recently emphasized, “ [t]he fair use doctrine thus ‘permits [and requires] courts to avoid rigid applica­ tion of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.’ ” Campbell, 510 U.S. at 577 (quoting Stew art v. Abend, 495 U.S. 207, 236 (1990) (internal quotation marks and citation omitted)).5

4 In 1992, Congress added the following senience to the end o f 17 U S C §107, in order to clanfy that the fair-use limitation is applicable to unpublished works: “ The fact that a work is unpublished shall not itself bar a finding o f fair use if such finding is m ade upon consideration o f all the above factors ” Pub L No. 102-492, 106 Stat 3145 (1992). Arguably, application of the fair use doctrine to unpublished works is one way in which section 107 departs from the common law. See, e g , H.R Rep No 102-836, at 4 (1992) ( “ The common law, going back to late eighteenth century English cases, had been stnct in prohibiting fair use of unpublished works under the theory that the author should decide when and in what form his or her work should first reach the public ” ), reprinted in 1992 U S C.C A.N. 2553, 2556; Salinger v Random House, In c , 811 F.2d 90, 95 (2d Cir.) (“ Though com m on law, especially as developed in England, appears to have denied the defense of fair use to unpublished works, see W. Patry, The Fair Use Privilege in Copyright Law 436—41 (1985), the 1976 Act explicitly makes all of the rights protected by copynght, including the right o f first publication, subject to the defense of fair use.” ), cert denied, 484 U.S. 890 (1987); New Era Publications In t’l, AP S v Henry Holt & C o , 695 F Supp. 1493, 1502 (S D N.Y 1988) (Copyright Act’s application o f fair use doctnne to unpublished work was “ in departure from the common law rule” ), a jfd , 873 F.2d 576 (2d Cir. 1989), cert denied, 493 U.S 1094 (1990) But see H arper &. Row, 471 U.S. at 550-51 (although “ fair use traditionally was not recognized [at common law] as a defense to charges o f copying from an author’s as yet unpublished works . . . [t]his absolute rule . . was tempered in practice by the equitable nature of the fair use doctnne” ) 5 See also Pierre N. Leval, Toward a F air Use Standard, 103 Harv L Rev 1105, 1110 (1990) ( “ The doctnne o f fair use limits the scope o f the copynght monopoly in furtherance of its utibtanan objective. Fair use should not be considered a bizane, occasionally tolerated departure from the grand conception of the copynght monopoly To the contrary, it is a necessary part o f the overall design ” ); Fogerty v Fantasy, Inc., 510 U S 517, 526-27 (1994) (quoting Twentieth Century Music Corp. v. Aiken, 422 U S 151, 156 (1975))1 T he limited scope o f the copynght holder’s statutory monopoly reflects a balance of competing claims upon the public interest: CreaUve w ork is to be encouraged and rewarded, but pnvate motivation must •ultimately serve the cause of promoting broad public avajlability o f literature, music, and the other arts. The immediate effect o f 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

90 Whether Government Reproduction o f Copyrighted Materials is a Noninfringing ‘ ‘Fair U se'

II. Fair Use and Government Photocopying

The federal government can be liable for violation of the copyright laws. Con­ gress has expressly provided that a work protected by the copyright laws can be “ infringed by the United States,” 28 U.S.C. § 1498(b) (1994),6 and further has provided that “ the exclusive action which may be brought for such infringe­ ment shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensa­ tion as damages for such infringement,” 28 U.S.C. § 1498(b) (Supp. Ill 1997). At the same time, it cannot be disputed that the federal government’s copying (and other use) of copyrighted materials is subject to the fair use doctrine codified in 17 U.S.C. § 107.7 It follows that any federal government photocopying that is a fair use is not infringing. However, there is no basis for concluding that the photocopying of copyrighted materials by the federal government automati­ cally or invariably constitutes a fair use. The case law provides very little guidance on the question of when government photocopying is a fair use. Reported cases involving application of the fair use doctrine to governmental conduct are rare. Indeed, the Williams & Wilkins deci­ sion, to which your letter refers and which we discuss below, is one of the only published opinions containing a significant discussion of governmental fair use.8 And, outside the context of public schools, we have found only one case — involving circumstances far removed from those at issue in this opinion — in which a court has rejected a government’s assertion that its use of copyrighted materials was fair.9 What is more, even outside the context of governmental use,

6 See also H.R. Rep. No 86-624, at 2 (1959) (“ When the Government deliberately publishes a copyrighted article without obtaining the prior consent o f the copynght proprietor, the general assumption would be lhat the holder, pursuant to the pnnciples o f ‘just compensation’ under the fifth amendment of our Constitution, should be entitled to an action against the Government for infringement ” ) 7 There is nothing in the statute to suggest that the federal government cannot invoke the fair use doctnne. The legislative history indicates lhat cenain governmental uses can be fair. See infra notes 19, 24 And the courts uni­ formly have assumed that the fair use analysis provided in section 107 o f the Act applies to government uses of copynghted matenals See, e.g., the cases cited in note 8, infra 8 A few other cases contain less extensive discussion o f governmental fair use. See, e g . Association o f Am. Med. Colleges v. Cuomo, 928 F.2d 519, 523-26 (2d Cir.), cert denied, 502 U.S 862 (1991), College Entrance Examination Bd. v Pataki, 889 F. Supp 554, 564-75 (N.D N Y 1995), Sinai v California Bureau o f Automotive Repair, No C -92-0274—VRW, 1992 WL 470699, at *3-*4 (N.D. Cai. Dec 21, 1992), College Entrance Examination Bd. v Cuomo, 788 F. Supp 134, 140-^3 (N.D.N Y. 1992), West v City o f New York, No 78 Civ. 1981 (MJL). 1985 WL 202, at *24—*25 (S.D N Y Jan. 18, 1985), Key Maps, Inc. v. Pruitt, 470 F. Supp 33, 37-38 (S.D Tex. 1978). O f these, only West and Key M aps involved decisions, necessary to the judgment, on the ments o f the fair use question; and only Key M aps involved a government entity making and distnbuiing multiple copies o f copynghted materials for internal government use 9 See College Entrance Examination B d , 889 F Supp at 564-75. In that case, the distnct court, on a motion for preliminary injunction, found a likelihood o f success on plaintiffs’ infringement claim against a state government. That case did not involve government copying for internal government use. See supra note 2. Instead, the case involved a challenge to a state statute that required testing organizations to disclose copies of their copynghted, confidential tests and related materials, and that further provided that such materials, once disclosed, would become public records. There also are at least two decisions in which courts have found that a distnbution of multiple copies o f copyrighted materials to students in a public school was not a fair use. See Marcus v Rowley, 695 F.2d 1171, 1174—79 (9th Continued

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there is only a small handful of reported cases involving whether and under what circumstances photocopying is a fair use.10 The sole reported decision (apart from the classroom context) concerning whether government photocopying is a fair use is Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973), a j f d by an equally divided Court, 420 U.S. 376 (1975). The plaintiff in that case challenged certain practices of the National Institutes of Health ( “ NIH” ) and the National Library of Medicine (“ N LM ” ). The NIH library ran a photocopying service for the benefit of its research staff: On request, researchers could obtain a photocopy of an article from any of the journals in the library’s collection, typically to assist them in their on-going projects or for background reading. As a general matter, NIH would agree to provide a requester only one copy of a particular article, only one article per journal issue, and no article o f over 50 pages. In 1970, the library filled 85,744 requests for photocopies of journal articles (including journals published by W il­ liams & Wilkins), constituting about 930,000 pages. See 487 F.2d at 1348. NLM is a repository of much of the w orld’s medical literature, in essence a “ librarians’ library.” Id. Upon request, NLM would provide photocopies of journal articles, free of charge, to other libraries and like research- and education-oriented institu­ tions, both public and private (including commercial organizations, such as drug companies). NLM provided only one photocopy of a particular article per request, and would not honor a request for photocopying of an entire journal issue. In 1968, a representative year, NLM filled about 120,000 requests by photocopying journal articles. NLM made no effort to ascertain the ultimate use to which the

Cir. 1983), Wihtol v. Crow, 309 F.2d 777, 780-81 (8lh C ir 1962) Such classroom cases may be instructive on the general matter o f fair use in the context o f reproduction for nonprofit purposes However, such cases typically involve archival collection o r distribution o f multiple copies o f copynghted materials that were, in the first instance, prepared and marketed primarily for use in the very same classroom setting. See, e.g., Marcus, 695 F.2d at 1175 W e assume that the government photocopying practices about which you are concerned will rarely, if ever, involve federal government duplication for educational use m a classroom, or practices that fairly can be said to be analogous to those at issue in Marcus O f course, insofar as certain federal government practices are akin to those at issue in the classroom cases, then the courts’ reasoning in decisions such as Marcus would be germane to the fair use analysis (The holding in Wihtol is of less practical value, since the court in that case merely held that “ [w]hatever may be the breadth o f the doctnne of ‘fair use,’ it is not conceivable to us that the copying of all, or substantially all, o f a copynghted song can be held to be a ‘fair use’ merely because the infnnger had no intent to infringe ” 309 F.2d at 780.) Furthermore, with respect to such cases it may be mstrucuve to look to the legislative history o f the 1976 Act, m which the House Committee on the Judiciary reproduced (i) an “ Agreement on Guidelines for C lassroom Copying in Not-for-Profit Educational Institutions with Respect to Books and Periodicals,” which had been drafted by representatives of author/publisher and educational organizations, and (n) a similar, more special­ ized set o f “ Guidelines for Educational Uses o f M usic,” which had been drafted by representatives of music pub­ lishing and educational organizations See House Report at 66-72, reprinted in 1976 U.S.C.C.A.N at 5680-86. The H ouse Committee expressed its belief that “ the guidelines are a reasonable interpretation of the minimum standards o f fair use” in the classroom context, id. at 72, reprinted in 1976 U.S C C A N at 5686, and the House and Senate Conferees “ accept[ed]” the guidelines “ as part o f their understanding of fair use,” H R Rep No. 94-1733, at 70 (1976), reprinted in 1976 U.S.C.C A N . 5810, 5811. (On the question of the legal effect, if any, of these guidelmes, see, e.g., Princeton Univ. Press v M ichigan Document Servs., Inc., 99 F 3 d 1381, 1390-91 (6th Cir 1996) (en banc), cert, denied, 520 U S 1156 (1997); id at 1410-12 (Ryan , J., dissenting); 4 Melville B Nimmer & David Nimmer, Nim m er on Copynght § 13 05[E][3][a), at 13-241-42 (1998)) l0 See, e g , Princeton Univ. Press, 99 F.3d 1381; American Geophysical Union v Texaco, I n c , 60 F.3d 913 (2d C ir 1994), cert, dismissed, 516 U .S. 1005 (1995); D uffy v. Penguin Books USA Inc., 4 F. Supp 2d 268, 27 4 - 75 (S D N.Y 1998), Television Digest, Inc. v United States Telephone A ss'n, 841 F. Supp. 5, 9-11 (D.D.C 1993); Basic Books, Inc v K inko's Graphics Corp., 758 F Supp 1522 ( S D N Y 1991)

92 Whether Government Reproduction o f Copyrighted Materials is a Noninfringing ' 'Fair Use ’

copied articles were put. Although NLM did provide some photocopies to institu­ tions outside the government, NLM declined to provide to non-government libraries copies of articles published within the preceding five years in any of 104 journals included on a so-called “ widely-available list.” Id. at 1348-49. The Court of Claims, in a 4-to-3 decision, held that the NIH and NLM photocopying practices were noninfringing because such practices were fair uses. The majority discussed at length eight separate “ considerations which merge to that conclusion,” id. at 1353:

(i) NIH and NLM are nonprofit institutions, see id. at 1354;

(ii) the libraries’ photocopying policies were “ within appropriate confines” — in particular, the libraries did not sell the copies, dis­ tribute them broadly, or, with slight exceptions by NLM, distribute the copies to nongovernmental entities, id. at 1354-55;

(iii) such library photocopying practices had long been carried out across the nation “ with apparent general acceptance,” id. at 1355- 56;

(iv) medical science would be seriously hurt by a finding that such library photocopying was infringing, see id. at 1356-57;

(v) the plaintiff had failed to prove economic detriment as a result of the libraries’ practices, see id. at 1357-59;

(vi) the statutory language and history were singularly unclear on the question, and it would be “ less dangerous” to rule in favor of the libraries until Congress acted to clarify the fair use question, id. at 1359-61;

(vii) contemporaneous legislative history of proposed legislation (that had not yet resulted in the 1976 amendment of the copyright law) “ indicate[dj the correctness of our general approach,” id. at 1361; and

(viii) the law in many foreign countries was that such practices were not infringing, see id. at 1361-62.

The Court of Claims in its decision also urged Congress to enact legislation to resolve the difficult fair use questions raised by the increasingly prevalent practice of photocopying — questions that were, in the court’s words, “ preeminently a problem for Congress.” 487 F.2d at 1360; see also id. at 1353, 1363 (“ Hopefully,

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the result in the present case will be but a ‘holding operation’ in the interim period before Congress enacts its preferred solution.” ). Williams & Wilkins appealed to the Supreme Court. In that Court, the Depart­ ment of Justice argued that the Court of Claims correctly analyzed the fair use question, and that the Court should affirm the judgment in favor of the United States. See Brief for the United States, Williams & Wilkins Co. v. United States, 420 U.S. 376 (1975) (No. 73-1279); Paul Goldstein, Copyright’s Highway 113— 26 (1994) (describing Supreme Court proceedings). An equally divided Court, without opinion, affirmed the low er court judgment. See 420 U.S. 376 (1975). Congress was well aware of the dispute in Williams & Wilkins and of the Court o f Claims’ plea that Congress enact legislation to resolve the difficult fair use questions raised in that case. See, e.g., Senate Report at 71. And, in the 1976 Act, Congress did take three steps with respect to the matter of photocopying. First, in section 106 of the Act, Congress expressly affirmed that the rights of a copyright owner include the rights “ to reproduce the copyrighted work in copies” and to “ authorize” such reproduction. 17 U.S.C. §106(1) (1994).11 Second, the text of section 107 of the Act — in which Congress for the first time formally codified the fair use doctrine — expressly provides that “ reproduction in copies . . . for purposes such as . . . news reporting, teaching . . ., scholar­ ship, or research,” can be “ the fair use of a copyrighted work.” Finally, in section 108 of the Act, Congress provided that certain forms of library and archival photocopying are not infringing, see 17 U.S.C.A. § 108 (West 1996 & Supp. 1999), thereby creating a discrete carve-out, or safe harbor, that does not “ in any way affect[] the right o f fair use as provided by section 107,” 17 U.S.C. § 108(f)(4) (1994). However, Congress did not otherwise resolve the fair use ques­ tions raised in Williams <£ Wilkins, and, in particular, did not identify the cir­ cumstances under which photocopying — and government photocopying in par­ ticular— would, or would not, constitute fair use under section 107 of the 1976 A ct.12 Instead, as explained above, Congress simply enacted 17 U.S.C. §107 in 11 As the court in Williams & Wilkins indicated, see 487 F.2d at 1350-51, 1359, there had been some question whether, under the then-existing copynght laws, the exclusive nghts of the copyright owner included the right to control the copying o f books and penodicals for personal use. See also B nef for the United States at 16 n26, Williams & Wilkins Co. v. United States, 420 U.S 376 (1975) (No 73-1279) (discussing this question). 12 In a memorandum attached to your letter, counsel for the CCC argue that section 108 of the 1976 Act “ expressly proscnbes the copymg at issue in W illiams & Wilkins,” and that congressional enactment of section 108 “ signalled C ongressional disapproval o f [Williams & Wilkins] on fair use grounds, and instead indicated that the photocopying activities in question should be covered by a separate statutory provision, namely Section 108.” Memorandum of W eil, Gotshal & M anges LLP, Re* Government Photocopying as Copyright Infringement at 22-23 (July 30, 1997) (“ Weil, Gotshal M em o” ). See also U nited States Information Infrastructure Task Force, Intellectual Property and the National Information Infrastructure: The Report o f the Working Group on Intellectual Property Rights, at 82 n.262 (Sept. 1995) ( “ W hite Paper” ) ( “ precedential value o f Williams & Wilkins may be reduced” because of, inter aha, “ Section 108’s proscnption on most ‘systematic’ photocopying” ), quoted with approval in Weil, Gotshal M emo at 22; William F. Patry, The Fair Use Privilege in Copyright Law 210 (2d ed 1995) ( “ In 1976, Congress by subjecting the activity before the Court o f Claims to a statutory exemption m Section 108 of the Copy­ nght Act, available only to hbranes and archives qualifying under Section 108(a) and then only in the enumerated instances described in Sections 108(d), 108(e), and further subject to the conditions of Section 108(g), indicated its disapproval o f the Court of Claims’ fair use holding.” ).

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order to “ codify the common-law doctrine.” H arper & Row , 471 U.S. at 549. Accordingly, the Court of Claims decision in Williams & Wilkins remains binding precedent in the Federal Circuit, where infringement claims against the federal government must be brought.13 The continued vitality of Williams & Wilkins in the Federal Circuit does not, however, mean that all federal government photocopying is a fair use. The Wil­ liams & Wilkins court, after discussing at length the eight different considerations, or “ elements,” that contributed to its decision, 487 F.2d at 1353-62, emphasized that its holding (that the library copying practices at issue were noninfringing)

This is incorrect, because section 108 of the 1976 Act does not narrow the protection for fair use provided by the common-law doctnne codified in section 107 Section 108(a) o f the Act, 17 U.S.C A § 108(a) (West 1996 & Supp 1999), provides that, under certain conditions, it is “ not an infringement of copynght for a library or archives . to reproduce no more than one copy or phonorecord o f a work, or to distribute such copy or phonorecord,” “ [notw ithstanding the provisions o f section 106.” Section 108(g)(2), in turn, states that “ (t]he rights of reproduction and distnbution under this section . . . do not extend” to certain cases involving the “ systematic reproduction or distribution of single or multiple copies.” (Emphasis added) Section 108(g)(2) does not “ expressly proscnbe[]” the copying practices at issue in Williams & Wilkins — indeed, nothing in section 108 “ proscnbes” any practice at all. Nor is there anything in section 108 suggesting that “ systematic” reproduction is “ lawful only via the [section 108(g)(2)] proviso, [and] could not be a fair use ” United States Copynght Office, Report o f the Register o f Copy­ rights' Library Reproduction o f Copyrighted Works (17 U.S.C. 108), at 98 (1983) ( “ 1983 Register Report” ) At most, section 108(g)(2) merely provides that the “ n ghts” to copy and distribute that are provided “ under” section 108 “ do not extend to” the “ systematic” practices descnbed in section 108(g)(2) To be sure, “ section 108 author­ izes certain photocopying practices which may not qualify as a fair use,” House Report at 74 (emphasis added), reprinted in 1976 U.S C.C.A N. at 5688, see also Senate Report at 67 However, the statute does not provide, or even suggest, that the circumstances under which copying is noninfringing under section 108(a) are those “ lhat would typically not amount to fair use [under section 107],” White Paper at 84-85 (emphasis added), nor that “ Section 108 was enacted to make lawful some types o f copying which would otherwise be infringements o f copy­ right, fair use notwithstanding,” 1983 Register Report at 96 (emphasis added) Indeed, by its express terms, nothing in section 108 “ in any way affects the nght of fair use as provided by section 107.” 17 U.S.C § 108(f)(4) (1994); see uiso House Report at 74 ( “ No provision of section 108 is intended to lake away any nghts existing under the fair use doctrine.” ), reprinted in 1976 U .S C C .A N at 5687-88, Senate Report at 67 (same); 122 Cong. Rec. 3836 (1976) (statement o f Sen Magnuson) ( “ the Judiciary Committee clearly sel out in iheir report that the fair use doctrine not only applies to reproduction practices of libraries, but that in no way did they intend section 108 to be a limitation upon the fair use doctnne” ). Accordingly, whether section 108 renders certain copying practices “ not an infringement” does not affect w hether such practices are noninfringing fair uses under section 107 See Texaco, 802 F. Supp. at 28 & n 26 (emphasizing that “ Section 108 is a separate special statutory exemption governed by an entirely different set of standards [than under section 107],” and rejecting the argument “ that the understanding o f Section 107 should be influenced by what is permitted under Section 108” ); accord 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[E][2], at 13-240 (1998) A certain copying practice can be “ noninfnnging” under section 107, under section 108, under both provisions, or under neither. In ils 1983 Report, the Register of Copyrights suggested that such a construction o f the statute, in which practices permissible under section 108 might also be permissible under section 107, would “ render §108 superfluous.” 1983 Register Report at 96 n.4 That is not the case, however. As the Register noted, “ the library community sought § 108 to permit copying that had not been spelled out in the proposed fair use provision ” Id. (emphasis added). Section 108 identifies (“ spell[s] out” ) as noninfnnging a category of library photocopying that may, or may not, constitute fair use Section 108 thus fairly can be viewed as a very valuable— and not superfluous— safe harbor: If a certain library practice is noninfringing under the specific and detailed provisions of section 108(a) (as confined by section 108(g)(2)), a library need not be concerned about how that particular photocopying practice would fare under section 107’s more complex and indeterminate fair use stand­ ards. 13 Section 1498(b) o f title 28 provides that “ the exclusive action which may be brought for mfnngement [by the federal government] shall be an action by the copynght owner against the United States in the Court of Federal Claims ” 28 U.S.C § 1498(b) (Supp. Ill 1997). Decisions o f lhat court are appealable to the United States Court o f Appeals for the Federal Circuit, see 28 U S C § 1295(a)(3) (1994), which in turn considers itself bound by decisions (such as Williams & Wilkins) that the former Court of Claims issued pnor to October 1982. See South Corp v. United States, 690 F 2d 1368, 1370 & n.2 (Fed Cir 1982); see also, e.g., Gargoyles, Inc. v. United States, 113 F 3d 1572, 1576 (Fed C ir 1997).

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was based upon all of the elements present in that case, and that its decision would not necessarily resolve different cases “ with other significant variables,” id. at 1362. The court expressly noted that it was not determining whether any of the particular elements in the Williams & Wilkins case would be sufficient for a finding of fair use, nor whether all of the relevant elements cumulatively were “ essential” to the finding o f fair use: It sufficed for the court simply to decide that “ at least when all co-exist in combination a ‘fair use’ is made out.” Id.\ see also id. ( “ we feel a strong need to obey the canon of judicial parsimony, being stingy rather than expansive in the reach of our holding” ).14 Implicitly, then, the decision in Williams & Wilkins itself suggests that there may be some circumstances under which government photocopying might be infringing. See also Brief for the United States at 14, Williams. & Wilkins Co. v. United States, 420 U.S. 376 (1975) (No. 73-1279) (“ The doctrine is applied as its rationale dictates in each case, and has no sharp edges.” ).15 A ‘ ‘per se’ ’ rule also would be inconsistent with the approach that the Supreme Court subsequently has taken in its decisions involving section 107 of the Copy­ right Act. The Court repeatedly has emphasized that the task of determining whether a particular use is fair “ is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis.” Cam pbell, 510 U.S. at 577; accord id. at 584 (Congress “ ‘eschewed a rigid, bright-line approach to fair use,’ ” in favor of “ a ‘sensitive balancing of interests.’ ” ) (quoting Sony Corp. o f America v. Universal City Studios, Inc., 464 U.S. 417, 449 n.31, 455 n.40 (1984)); H arper & Row, A ll U.S. at 552 (“ fair use analysis must always be tailored to the individual case” ).

III. D eterm ining Whether a Particular Government Photocopying Practice is a Fair Use

Our conclusion that government photocopying is not invariably noninfringing does not, of course, answer the question whether government agencies should enter into licensing agreements for photocopying, and if so, what the terms and

14 M ore recent fair use decisions involving photocopying similarly have been confined narrowly to the particular copying practices in dispute See, e g , Texaco, 60 F.3d at 931 ( “ Our ruling is confined to the institutional, systematic, archival multiplication o f copies revealed by the record— the precise copying that the parties stipulated should be the basis for . . .d e c is io n . ”) 15 As we discuss supra p. 88, we have no reason to believe that any agency of the executive branch has argued, or advised, that government copying is “ per se a fair use.” In this respect, it is notable in particular lhat, in its Supreme Court brief in Williams <6 Wilkins, the United States cited a House Report as “ indicating] . that photocopying by the government may in som e circumstances constitute copynght infringement ” B nef for the United States at 15 n 24, Williams & Wilkins Co. v. United States, 420 U.S. 376 (1975) (No 73-1279) (citing H.R. Rep. No 86-624, at 5 (1959)) In the cited House Report, a House Committee indicated that the federal government could infringe a copyright when it “ publishes” an article without permission See supra note 6. The Committee did not indicate what it meant by “ publishes,” and did not expressly mention photocopying At the page of the H ouse Report (page 5) that the Solicitor General cited, however, a letter wntten by the Department of Commerce assumes that government photocopying could be infringing. See also id. at 8 (reflecting a similar assumption conveyed by the Librarian o f Congress) There is no suggestion in the House Report that the House Committee disagreed w ith this assumption.

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conditions of such agreements should be. In answering that question, there is an inescapable tension. On the one hand, because of the highly fact-bound nature of the fair use inquiry, it is difficult to ascertain in advance which governmental practices will, or will not, be fair uses: There is an “ endless variety of situations and combinations of circumstances that can rise in particular cases.” House Report at 66, reprinted in 1976 U.S.C.C.A.N. at 5680. Such uncertainty, when viewed in isolation, might weigh in favor of entering into relatively broad licensing agree­ ments, so as to ensure that an agency’s photocopying will never be infringing. On the other hand, and in addition to the desire to avoid unnecessary costs, there is an important legal consideration that counsels against entering into unnecessary licensing agreements and in favor of limiting such agreements to encompass only those photocopying practices that are infringing — namely, the concern that gen­ eral custom and usage may be integral to the fair use analysis.16 Indeed, at least one court has opined, in particular, that whether it is “ fair,” under the copyright law, to engage in a photocopying practice without compensation may depend, in part, on whether similarly situated entities customarily agree to pay a fee to the copyright holders.17 We have no occasion here to consider whether that court was correct in this regard; but it is possible that other courts may follow suit. Accordingly, if government agencies routinely agree to pay licensing fees to engage in photocopying practices that were fair uses at the time, there is a chance some courts may conclude that a growing or longstanding custom o f paying such fees weighs against a finding that such photocopying practices are fair uses when unlicensed. Thus, an agency that decides to negotiate a photocopying license should seek to limit the scope of the licensing agreement so as not to cover those photocopying practices that the agency, in good faith, concludes are not infringing. In the end, each agency must do its best to evaluate whether any o f its photocopying practices are infringing, and, if so, to obtain proper authorization for such uses of copyrighted materials. Although, as we have explained, there may be many government photocopying practices that are fair uses (or that are, for other reasons, not infringing), under some circumstances government photocopying may not be a fair use. In evaluating whether their practices are infringing, agencies should be guided by Williams & Wilkins, which, as noted above, is still binding precedent in the Federal Circuit. However, as explained above, the holding in Williams & Wilkins itself was dependent on the particular facts of that case, and the 8150 calculus may be different with respect to govern­

16 See, e g , Williams & Wilkins * 487 F 2 d at 1355-56, see also Harper & Row, 471 U S . at 550 (the fair use doctnne traditionally “ was predicated on the author’s implied consent to ‘reasonable and customary’ use when he released his work for public consum ption” ) 17 See Princeton Univ. Press, 99 F.3d at 1387 (consideration of the potential licensing revenues for photocopying in a fair use analysis is “ especially” appropnate where the copynght holder not only has an interest in exploiting the licensing market, but also “ has actually succeeded in doing so” ) But c f Campbell, 510 U.S. at 585 n.18 (defend­ ants’ request for permission to use copyrighted song in a parody does “ not necessarily suggest that they believed their version was not fair use; the offer may simply have been made in a good-faith effort to avoid this litiganon” ).

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ment photocopying practices that diverge in material ways from the NIH and NLM practices at issue in Williams & Wilkins .18 Moreover, agencies should be aware that, in two important recent cases in other circuits, sharply divided courts o f appeals have held that certain commercial photocopying practices were not fair uses. In Princeton Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996) (en banc), cert, denied, 520 U.S. 1156 (1997), the United States Court of Appeals for the Sixth Circuit held that a commercial copyshop had engaged in willful infringement by reproducing substantial segments of copyrighted works of scholarship and binding such repro­ ductions into coursepacks that the copyshop then sold to students. In American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2d Cir. 1994), cert, dismissed, 516 U.S. 1005 (1995), the United States Court of Appeals for the Second Circuit held that Texaco’s systematic photocopying o f scientific journal articles for its researchers’ archival use was infringing. Even if the United States Court of Appeals for the Federal Circuit were to adopt the reasoning of these decisions, the rationale of those decisions would not apply with full force in the context of government photocopying, since the decisions each rested, in part, on the fact that each of the defendants “ acquire[d] conspicuous financial rewards from its use of the copyrighted material.” Id. at 922; see also Princeton Univ. Press, 99 F.3d at 1386, 1389. Moreover, as the Texaco court noted, “ courts are more willing to find a secondary use [i.e., the use that is made of the photocopies] fair when it produces a value that benefits the broader public interest.” 60 F.3d at 922. Nevertheless, the ongoing debate among the judges in cases such as these (and in W illiams & Wilkins) demonstrates that the boundaries of fair use in the photocopying context are uncertain, highly contested, and especially dependent upon the particulars of a given case. And, while in some cases it might be fairly easy for an agency to determine that a government practice is noninfringing,19 usually that will not be the case: Whether a particular government photocopying practice is a fair use often will depend upon a “ ‘sensitive balancing of

18 M oreover, the subsequent advent of the CCC, and the possibility of reasonable licensing agreements with that organization, may affect at least one of the factors that led the Court of Claims to rule against the copyright holder in Williams & Wilkins. The Court of C laim s reasoned that medical science would be seriously hurt by a finding that the NIH and NLM photocopying was infringing, since the result of such a holding could have been that libraries w ould have to cease their photocopying practices. See 487 F.2d at 1356-57 But insofar as such libraries now could avoid a finding o f fair use by agreeing to pay a reasonable and affordable licensing fee — that is, a fee that would not materially deter the actual making and use o f valuable photocopies — the harm that the Williams & Wilkins court foresaw could be diminished See Texaco, 60 F 3d at 924 (“ To the extent the copying practice was ‘reasonable’ in 1973 [when Williams & Wilkins was decided], it has ceased to be ‘reasonable’ as the reasons that justified it before [photocopying licensing] have ceased to exist ’) (quoting the district court opinion, 802 F. Supp. at 25) But see id at 934 (Jacobs, J , dissenting). 19 For an example outside the context o f photocopying, see, e.g., House Report at 73 ( “ The Committee has consid­ ered the question o f publication, in Congressional hearings and documents, of copynghted material. Where the length of the work or excerpt published and the number of copies authonzed are reasonable under the circumstances, and the work itself is directly relevant to a matter o f legitimate legislative concern, the Committee believes that the publication would constitute fair use.” ), reprinted in 1976 U .S C.C A.N at 5687

98 Whether Government Reproduction o f Copyrighted Materials is a Noninfringing "Fair U se’

interests.’ ” Cam pbell, 510 U.S. at 584 (quoting Sony Corp. o f America v. Uni­ versal City Studios, Inc., 464 U.S. 417, 455 n.40 (1984)). In the text of section 107 of the Copyright Act itself, Congress has instructed that, in determining whether the use made of a work in any particular case is a fair use, ‘‘the factors to be considered shall include’’ the following:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational pur­ poses;

(3) the amount and substantially 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.

These four statutory factors should not be treated in isolation, one from another. Campbell , 510 U.S. at 578. Nor are those factors exhaustive. See H arper & Row, 471 U.S. at 560; H.R. Rep. No. 102-836, at 9-10 (1992), reprinted in 1992 U.S.C.C.A.N. 2553, 2561-62.20 Most importantly, it is critical that the statutory factors, as well as all other pertinent factors and considerations, “ be explored, and the results weighed together, in light o f the purposes o f copyright." Campbell, 510 U.S. at 578 (emphasis added); see also id. at 581 (the fair use inquiry requires that any particular use of copyrighted material “ be judged, case by case, in light of the ends of the copyright law” ).21 Accordingly, before turning to particular factors and considerations that agencies should consider in the context of govern­ ment photocopying, it is important once again to identify the “ purposes of copy­ right.” Copyright law “ ultimately serves the purpose of enriching the general public through access to creative works.” Fogerty v. Fantasy, Inc., 510 U.S. 517-18, 527 (1994); see also H arper <£ Row, 471 U.S. at 545 (“ copyright is intended to increase and not to impede the harvest of knowledge” ). Thus, in determining whether a particular photocopying practice is a fair use, the ultimate question to be answered is whether permitting the government to continue to engage in the practice without paying a licensing fee would “ serve[] the copyright objective

20 Section 107 expressly provides that “ the factors to be considered shall include” the four enumerated factors (emphasis added), and the 1976 Act elsewhere provides that the term “ including” is “ illustrative and not limitative,” 17 U S.C. § 101 (1994) 21 See also 4 Melville B. Nimmer & David Nimmer, N immer on Copyright § 13 05[A][5], at 13-195 (1998) (“ the protean factors enumerated in Section 107, standing by themselves, lack the concreteness to provide definite answers to difficult cases” ); Lloyd L Weinreb, Fair Use, 61 Fordham L. Rev 1291, 1306 (1999) ( “ fair use depends on a calculus of incommensurables” ).

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of stimulating productive thought and public instruction without excessively diminishing the incentives for creativity.” Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1110 (1990), cited with approval in Campbell, 510 U.S. at 5 7 8 .2 2 Moreover, although the point is less clearly established, the fair use doctrine may be understood to contemplate permitting uses that serve “ not only . . . the purpose of copyright but also . . . other socially recognized purposes.” Lloyd L. Weinreb, F a ir’s Fair: A Comment on the Fair Use Doctrine, 103 Harv. L. Rev. 1137, 1144 (1990). For example, the Supreme Court in the Sony case held that consumer videotaping of television broadcasts for purposes of “ time-shifting” was a fair use, in part because such a practice “ yields societal benefits.” 464 U.S. at 454. Elaborating on this point, the Court cited the example of using a videotaping machine “ to enable a [hospital] patient to see programs he would otherwise miss,” which, as the Court explained, “ has no productive purpose other than contributing to the psychological well-being of the patient.” Id. at 455 n.40. O f greater pertinence to the subject matter at hand — namely, government copying — the Court further suggested that “ a legislator who copies for the sake o f broadening her understanding o f what her constituents are watching; or a con­ stituent who copies a news program to help make a decision on how to vote,” are examples of uses that could be “ fair.” Id. Thus, it fairly can be argued that, as a general matter, “ courts are more willing to find a secondary use fair when it produces a value that benefits the broader public interest,” Texaco, 60 F.3d at 922, in contrast with a use that “ can fairly be characterized as a form o f ‘commercial exploitation,’ i.e., when the copier directly and exclusively acquires conspicuous financial rewards from its use of the copyrighted material,” id .23 For instance, the federal government typically photocopies materials in order to facilitate some other, “ secondary” use of such materials, and such secondary use generally is aimed at providing a public benefit, or at serving a “ broad[] public purpose.” Id. Insofar as an agency’s photocopying is intended to facilitate such public purposes, that should weigh in favor of a finding of fair use.24 See a lso infra p. 101 (discussing whether purpose of the photocopying is to enhance profitmaking).

22 See also, e.g., Atari Games Corp. v Nintendo o f Am., Inc., 975 F 2 d 832, 843 (Fed. Cir 1992) (where, m “ reverse engineering” o f computer softw are, “ intermediate” copying permitted the user to study that software and thereafter design new video game program s, the resultant “ growth in creative expression” weighed in favor of finding that the copying was a fair use). 23See also, e g ., N im m er, § 13.05[B][4], at 13-205 ( “ The public interest is also a factor that continually informs the fair use analysis ” ) (footnote omitted). 24 See, e.g., Williams & Wilkins, 487 F 2 d at 1353 ( “ W e cannot believe, for instance, that a judge who makes and gives to a colleague a photocopy o f a law review article, m one o f the smaller or less available journals, which bears directly on a problem both ju d g es are then considering in a case before them is infringing the copynght, rather than making ‘fair use’ of his issue o f that journal.” ), Key Maps, I n c , 470 F. Supp at 38 (county fire marshal’s distribution o f copies o f copynghted m aps to 50 fire departments, law enforcement agencies, and civil defense units in the county was “ legitimate, fair, and reasonable,” since the copies were disseminated “ solely for internal purposes which related to a discemable public interest,” namely, “ the coordination of fire prevention activities in the unincor­ porated areas o f [the] county” ), see also House Report at 65 (noting that, under section 107 of the 1976 Act,

100 Whether Government Reproduction o f Copyrighted Materials is a Noninfringing “Fair Use'

In order to decide whether a particular government use of copyrighted materials would, on the whole, “ promote the Progress of Science and useful Arts,” it is necessary to take into account an “ ample view of the universe of relevant evi­ dence.” Campbell, 510 U.S. at 575, 584. Similarly, in order to determine whether any other benefits to the broader public interest would sufficiently outweigh the costs of any reduction in the incentives for creativity, it is necessary to engage in a comprehensive evaluation of all pertinent factors. We think that, in the par­ ticular context of government photocopying, the following specific considerations (each of which bears on the four enumerated statutory factors) might have a significant impact on the fair use calculus: (a) One important consideration that courts typically address under the first statutory factor (“ the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes” ) is whether the use in question is undertaken in order to increase the user’s profits. In most, if not all, cases, the purposes for which the government makes photocopies do not include profitmaking or commercial exploitation. Although the nonprofit nature of the government’s use of photocopies would not be dispositive, see Campbell, 510 U.S. at 584, it certainly would be “ one element,” id., germane to the fair use question.25 The commercial/nonprofit distinction may be especially significant where, as in most cases of photocopying, the secondary use is not “ transformative” — i.e., where the copyrighted material is merely copied in its original form and is not transformed into another valuable product. See id. at 579 (the more transformative the use, the less significant to the analysis will be the question of commercialism).26

“ courts might regard as fair” the “ reproduction o f a [copynghted] work in legislative or judicial proceedings or reports” ), reprinted in 1976 U.S C.C.A N. at 5678-79; Senate Report at 61-62 (same). Harper & Row, 471 U.S. at 584-85 n.8 (Brennan, J., dissenting) (example of a judicial opinion quoting extensively from copynghted materials), Sinai, 1992 WL 470699, at *3 (state Bureau o f Automotive Repairs used matenals for a “ public purpose” when it disseminated an auto emissions chart to field offices throughout the state so that those offices could assist smog check stations and consumers in complying with the state’s emission laws). 25 See also Harper & Row, 471 U.S at 562, Texaco, 60 F 3d at 921-22 26 Counsel for the CCC, citing Campbell, suggest that nontransformative uses “ are unlikely to be regarded as fair ones.” Weil, Gotshal Memo at 8 However, the Court in Campbell simply indicated that, because “ the goal of copynght, to promote science and the arts, is generally furthered by the creation of transformative works, . . . (sjuch works thus lie at the heart o f the fair use doctnne’s guarantee o f breathing space within the confines of copyright, . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding o f fair u s e ” 510 U.S. at 579. The Court expressly cautioned that such transformative use “ is not absolutely necessary for a finding o f fair use,” id., and in support of that proposition, the Court cited (i) a case (Sony Corp o f Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984)) in which the Court found a nontransformative use to be noninfringing, and (n) the express indication in section 107 of the 1976 Act that reproduction o f multiple copies for classroom distnbution can be a fair use. Id at 579 & n .ll, see also id. at 584—85 (eschewing fair use analysis that relies on a “ hard evidentiary presumption,” in light of the need for a “ sensitive balancing” o f interests). It is important to note, as well, that the very first example that section 107 provides of a use that can be “ fair” is “ reproduction in copies or phonorecords,” even though such “ reproduction” in most cases would not be “ transformative” in the sense the Court described in Campbell See also House Report at 66 ( “ the reference [m 17 U.S C. §107] to fair use ‘by reproduction in copies or phonorecords or by any other m eans’ is mainly intended to make clear that the doctrine has as much application to photocopying and taping as to older forms o f use” ), reprinted in 1976 U.S C C A.N. at 5679.

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(b) Photocopying more likely will be deemed “ fair” where the photocopies are disseminated to a discrete and limited audience within the government. To the extent that copies are sold, or distributed broadly, especially outside the government, that likely would weigh against a finding of fair use. See Williams & Wilkins, 487 F.2d at 1353 & n.12, 1354—55. (This consideration likely would be germane to the first ( “ purpose and character of the use” ) and fourth ( “ effect of the use upon the potential market for or value of the copyrighted work” ) statu­ tory factors.) (c) Copying that is done “ spontaneously],” for the purpose of facilitating an immediate and discrete objective, is more likely to be a fair use than systematic “ archival” copying of extensive materials for possible future use. See Texaco, 60 F.3d at 919-20. (This consideration, too, would bear on the first and fourth statutory factors.) And, as the third statutory factor expressly indicates, “ the amount and substantiality of the portion used in relation to the copyrighted work as a whole’’ also is relevant to determining whether a use is fair. (d) Copying materials for the purpose of collecting or studying certain facts or ideas contained therein — as opposed to the work’s original expression — increases the likelihood that the reproduction will be a fair use. In Feist Publ ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the Court emphasized that, as a matter of constitutional law, “ facts are not copyrightable.” Id. at 344. All facts — scientific, historical, biographical, and news of the day — ‘‘ ‘may not be copyrighted and are part of the public domain available to every person.’ ” Id. at 348 (citation omitted); accord H arper & Row, 471 U.S. at 556 (“ No author may copyright his ideas or the facts he narrates.” ). Furthermore, 17 U.S.C. § 102(b) (1994) provides that “ [i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery.” The exclusion of facts and ideas from copyright protection, like the fair use doctrine, serves the goal of promoting the progress of science and useful arts. See Campbell, 510 U.S. at 575 n.5.27 Accordingly, copyright protection for a work containing facts or ideas “ is limited to those aspects of the work — termed ‘expression’ — that display the stamp of the author’s originality.” H arper & Row, 471 U.S. at 547. Indeed, as the Court reemphasized in Campbell, “ ‘facts contained in existing works may be freely copied.’ ” 510 U.S. at 575 n.5 (quoting Feist, 499 U.S. at 359).28 Thus, where the government’s copying is limited to the bare facts contained in particular mate­

27 Moreover, the Copyright Act’s distinction between copyrightable expression and uncopynghtable facts and ideas is necessary in order to reconcile the restrictions o f the Act with the First Amendment. See Harper & Row, 471 U.S. at 556, 560, see also New York Tim es Co. v. United States, 403 U.S. 713, 726 n.* (1971) (Brennan, J., concur­ ring), cited with approval in Harper &. Row, 471 U.S. at 556 28 Thus, for exam ple, the Court in H arper & Row implied that although direct quotations from President Ford’s biography were subject to copynght protection, the histoncal facts contained in that biography were not entitled to such protection and could be freely copied. See 471 U.S at 565-66 & n.8 (applying copynght analysis only to “ verbatim quotes” from the biography, and excluding from infringement consideration historical quotations attnb- uted to third parties and to government documents)

102 Whether Government Reproduction o f Copynghted Materials is a Noninfringing ‘ ‘Fair Use ’

rials, and there is no copying of protected expression, there is no possibility o f copyright infringement, and the fair-use question is inapposite. Moreover, even if a document or book is entitled to some copyright protection, nevertheless, as a general matter “ fair use is more likely to be found in factual works than in fictional works.” Stewart v. Abend, 495 U.S. 207, 237 (1990). Accordingly, even where the government copies materials that contain protected “ expression,” or factual compilations that arrange or select facts in a manner sufficiently original to trigger some limited, “ thin” copyright protection,29 the photocopying more likely will be a fair use if the purpose of the copying is simply to obtain, collect, or study the facts and ideas contained in the materials. This will be the case especially where, for purposes of photocopying, the facts and ideas cannot readily be segregated from the protected expression, and where the government’s copying of the protected expression therefore is merely incidental to its copying of unprotected facts and ideas.30 (e) The fourth factor that the statute expressly identifies as relevant to the fair- use analysis is the “ effect of the use upon the potential market for or value of the copyrighted work.” This factor requires courts “ to consider not only the extent of the market harm caused by the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market’ for the original.” Campbell, 510 U.S. at 590 (quoting 3 Nimmer § 13.05[A][4], at 13-102.61 (1993)). The importance of this factor “ will vary, not only with the amount of harm, but also with the relative strength of the showing on the other [fair-use] factors.” Id. at 590 n.21.

29“ [T]he copynght in a factual compilation is thin,” extending only to the selection or arrangement of the facts, if any, that is original or expressive Feist, 499 U S at 348 As the Court explained- The mere fact that a work is copynghted does not mean that every element of the work may be protected Originality remains the sine qua non of copyright, accordingly, copyright protection may extend only to those components o f a work that are original to the author. . . Thus, if the compilation author clothes facts with an onginal collocation o f words, he or she may be able to claim a copynght in this written expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. Id at 348-49 30 See. eg., Texaco, 60 F 3d at 925 & n .ll. National Rifle A s s ’n o f Am v Handgun Control Fed. o f Ohio, 15 F 3d 559, 562 (6th Cir.), cert, denied, 513 U.S 815 (1994), Texaco, 802 F Supp at 15 (although such a fact- centered justification for photocopying “ has some m erit,'’ and is “ ingenious,” it “ simply does not fit the facts of the case” ); see also, e g , Atari Games Corp , 975 F 2d at 843 ( “ When the nature of a work requires intermediate copying to understand the ideas and processes in a copyrighted work, that nature supports a fair use for intermediate copying Thus, reverse engineenng object code to discern the unprotectable ideas in a computer program is a fair u s e ” ); Sega Enters. Ltd. v. Accolade, In c , 977 F.2d 1510, 1524—26 (9th Cir. 1992). By analogy, in the context of publication (rather than mere reproduction) o f copynghted materials, the Supreme Court has indicated that it may be permissible to copy protected expression verbatim where “ necessary adequately to convey the facts,” or where particular expression is “ so integral to the idea expressed as to be inseparable from it ” Harper & Row, 471 U S at 563, see also Leval, Toward a Fair Use Standard, 103 Harv L Rev. at 1113-15. Perhaps the most famous case of this sort is Time Inc v Bernard Geis A sso cs, 293 F. Supp. 130 (S D N Y 1968), in which the court held that it was fair use to depict frames from the copyrighted Zapruder film in a book about the Kennedy assassination, where there was “ a public interest in having the fullest information available on the murder of President Kennedy,” and where such photographs made the author’s theory o f the assassination “ easier to understand,” id at 146.

103 Opinions o f the Office o f L egal Counsel in Volume 23

The most obvious way in which copying can have an adverse market effect is where it directly curtails demand for purchase of the original work, such as where an entity uses photocopying in lieu of additional subscriptions of the original work that it otherwise would purchase. See, e.g., Texaco , 60 F.3d at 927- 29. Furthermore, with the advent of the CCC, it now can be argued that the failure to pay a licensing fee for the photocopying of materials covered by the CCC has an adverse effect on another potential “ market” that was not present at the time of W illiams & Wilkins — namely, the potential “ licensing fee” market. See, e.g., Princeton Univ. Press, 99 F.3d at 1387-88; Texaco, 60 F.3d at 929-31. Because this sort of “ harm ” to a licensing fee “ market” could, by definition, exist whenever an entity refuses to provide the requested compensation for its copies, what is significant is not the simple question of whether any such market harm exists, but rather, the magnitude and effect of the harm. “ Market harm is a matter of degree.” Campbell, 510 U.S. at 590 n.21.31 Harm to this potential “ licensing fee” market, like other forms of market harm, should be germane to the fair-use analysis only if, and to the extent that, such harm would deter “ ‘the creation and publication of edifying matter.’ ” Id. at 578 n.10 (quoting Leval, Toward a F air Use, 103 Harv. L. Rev. at 1134). If “ unrestricted and widespread [photocopying] o f the sort engaged in by the [government],” Campbell, 510 U.S. at 590 (internal quotation marks omitted) would not appreciably alter the incen­ tives to create and disseminate the underlying works (and other “ edifying” original creations), the harm to the fee “ market” should have correspondingly limited impact when evaluating this fair use factor.

Conclusion

There is no “ per se” rule that government reproduction of copyrighted mate­ rial— including, in particular, government photocopying of copyrighted materials for internal government use — automatically qualifies as a fair use under section 107 of the Copyright Act of 1976. However, government photocopying would in many contexts be noninfringing because it would be a “ fair use” ; and there are good reasons that, if an agency decides to negotiate photocopying licensing agreements, it should seek to limit the scope of any such arrangement to cover only those government photocopying practices that otherwise would, in fact, be infringing.

RANDOLPH D. MOSS Acting Assistant Attorney General Office o f Legal Counsel

31 See also W illiam W Fisher III, Reconstructing the Fair Use D octnne, 101 Harv L. Rev 1659, 1671-72 (1988).