A Brief Review of Fair Use in Litigation

“No Dr. Smith, producing the articles you relied on for your expert testimony would not be copyright infringement” A Brief Review of Fair Use in Litigation

By A. Scott Ross

Litigate long enough and eventually you will hear it. You request a key document and get the response: “Sorry, that document is “copyrighted.” Making a copy for you would be copyright infringement.” This article takes a brief trip through some of the governing law of copyright “fair use,” focused specifically on the use of copyright protected documents in litigation. As the title implies, copying a document for use as evidence generally constitutes “fair use,” and is therefore not a copyright infringement.

Copyright protection extends to all “original works of authorship,” 17 U.S.C. sec. 102(a), arises upon creation of the work, id., generally extends for the life of the author plus 70 years, 17 U.S.C. sec. 302(a), and among other things prohibits copying.17 U.S.C. sec. 106(1).Importantly, however, copyright protection is limited by the doctrine of “fair use,” which allows copying of otherwise protected material under certain circumstances .Fair use is codified at Section 107 of the Copyright Act: “the fair use of a copyrighted work, including such use by reproduction . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”17 U.S.C. sec. 107.According to Section 107, four factors should be considered in determining whether “the use made of a work in any particular case” is a fair use:”(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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.”

The fair use doctrine generally allows copying for use in litigation, as a number of cases have held. The leading case is Bond v Blum, 317 F.3d 385 (4th Cir. 2003), where an author sued over the use of his unpublished manuscript as evidence in a prior custody battle. The author’s manuscript, Self-portrait of a Patricide: How I Got Away With Murder, described how he had beaten his father to death with a hammer. Fair use protected the lawyers ” and parties ” use of the manuscript as evidence in the custody case, even though the entire manuscript had been copied without the author’s permission. Noting that the Section 107 fair use factors are “illustrative,” not “exclusive,” the Fourth Circuit reasoned the manuscript had not been used for a commercial purpose, and use of the document in litigation would not harm the market for the work; that the work was a factual one, whereas “a fictional work might be closer to the core of copyright;” that although as a general matter the case for fair use decreases the more of a work the defendant has copied, this is an “imperfect generalization,” and copying and use of the manuscript as evidence, “even the entire manuscript, does not undermine the protections granted by the [Copyright] Act but only serves the important societal interest in having evidence before the factfinder;” and, finally, that defendants” use of the manuscript as evidence would not “materially impair the marketability of the work” and would not “act as a market substitute for it.” Applying these Section 107 factors, therefore, the Fourth Circuit easily concluded that copying and use of the manuscript as evidence, even the entire manuscript, was a fair use and did not constitute copyright infringement. The Fourth Circuit summarized its core rationale: “because the societal benefit of having all relevant information presented in a judicial proceeding is an important one, it should be furthered if doing so would not unduly undermine the author’s rights with regard to his creative work.”

Other courts have followed the Fourth Circuit’s lead. “Reproduction of copyrighted material for use in litigation or potential litigation is generally fair use, even if the material is copied in whole.”Stern v Does, 978 F.Supp.2d 1031, 1044-49 (C.D. Cal. 2011).Fair use protected a law firm when it viewed and printed archived copies of the plaintiff’s website found on the Internet Archive Wayback Machine (www.archive.org). Healthcare Advocates, Inc. v. Harding, Earley, Follmer & Frailey, 497 F.Supp.2d 627 (E.D. Pa. 2007).Fair use protected the copying and use of an attorney’s internet blog posts as evidence in attorney disciplinary proceedings, where the attorney was charged with making false statements about judges and other lawyers in the blog.Denison v. Larkin, 64 F.Supp.3d 1127 (N.D. Ill. 2014).Notably, the fair use defense was sustained even though over 1,000 pages of the attorney’s blog had been copied.Id. at 1130.Fair use protected a city council’s use of adult films as evidence in a nuisance abatement action, where the council had to prove that a theater was in fact showing obscene movies, and therefore presented comprehensive still images and audio recordings of the movies. Jartech, Inc. v. Clancy, 666 F.2d 403 (9th Cir. 1982).Fair use protected copying and filing of a potential expert’s resume, where an agreement to retain the expert was never concluded and the expert was later withdrawn.Devil’s Advocate, LLC v Zurich American Ins. Co., 2014 WL 7238856 (E.D. Va. Dec. 16, 2014) (appeal filed).Fair use protected two attorneys ” copying and filing of plaintiff’s essays in prior litigation, even though the court concluded that their articulated reasons for doing so were somewhat thin.Hollander v. Swindells-Donovan, 2010 WL 844588 (E.D.N.Y. March 11, 2010).Fair use protected a police department when it copied and publicly displayed photos of a murder victim seized from her photographer-employer during the course of its murder investigation.Shell v. City of Radford, 351 F.Supp.2d 510 (W.D. Va. 2005).

And fair use protected a patent firm’s copying and use of scientific journal articles as evidence of prior art in its patent practice. American Institute of Physics v. Schwegman, Lundberg & Woessner, P.A., 2013 WL 4666330 (D. Minn. Aug. 20, 2013).Evaluating the nature and markets of the original and allegedly infringing works, the law firm’s use of the articles was held to be “transformative,” meaning that the firm did not use the scientific articles “for the same intrinsic purpose” as their publishers. The patent lawyers “needed to make internal copies of the Articles and review those copies to provide the [patent office] with information relevant to the patentability of the firm’s clients ” inventions. “By contrast, the publishers “distribute[d] the scientific articles in their journals to inform the scientific community of advancements in scientific research . . . and to allow the scientific community to test the quality of the authors ” methods and conclusions. “Although “transformative” uses often alter the original work (parodies are an example), alteration is not required.See, e.g., Stern v. Does, 978 F.Supp.2d 1031, 1045 (C.D. Cal. 2011) (attorney’s list serve post questioning accounting firm’s billing practices copied and forwarded to the accounting firm; use held transformative, in that by forwarding the post, defendants “conveyed the fact of the post rather than its underlying message”).

This concept, that use in litigation usually does not compete with or undermine the value of the copyrighted work in its original market, appears as a recurring theme in the litigation fair use cases.See, e.g., Denison, supra 64 F.Supp.3d at 1133-34; Devil’s Advocate, supra.It ultimately drove the holding in the one case holding that fair use did not protect the unpaid use of a copyrighted work in litigation. In that case, “litigation was one of the contemplated uses of the copyrighted photos at issue.”Images Audio Visual Productions, Inc. v. Perini Bldg. Co., Inc., 91 F.Supp.2d 1075 (E.D. Mich. 2000). A construction firm hired an aerial photographer to document construction progress on a casino project. The agreement with the photographer called for the payment of a flat fee for each aerial photo shoot, plus a specific charge for each photo print or copy ordered. When the construction company later needed prints for an arbitration claim, it initially ordered them from the photographer, but then decided the photographer’s charge for the photo prints would be too high and instead made its own color copies. In assessing the “purpose and character of the use” of the aerial photos, the Eastern District of Michigan observed that the defendant construction company had used the color copies of plaintiff’s photos “for precisely the same purpose ““ or at a minimum, for one of the same purposes ““ as the photos themselves were intended to serve; namely, as a pictorial record of Defendant’s progress on the . . . construction project.” Id. at 1081.The court distinguished cases like those cited above, where litigation copies were made of “works that played some role in the underlying facts of the case. “By contrast, the aerial photos were “created specifically for the purposes of the litigation.” Id. at 1082.The construction company made “intrinsic use” of the aerial photographs ““ used them for the purpose for which they were created ““ when it copied and used them in the arbitration proceeding. The reason these photos were made was to document progress on the construction project in the event of litigation, and the “market” for their sale consisted of firms like the defendant construction company who might need to file copies of the photos as litigation exhibits. As the court emphasized, “litigation was specifically contemplated, by both parties, as one of the principal “markets” for Plaintiff’s photos.” Id. at 1085.Using them for this purpose without permission and payment effectively destroyed their value in the limited market for which they were created. On balance, therefore, fair use did not protect the construction company from a copyright infringement claim by the photographer. Id. at 1086.

The fair use in litigation cases are easily reconciled by the “important distinction 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 the litigation.” Id. at 1086.When, for example, an expert witness relies upon something, be it an article, an x-ray, a computer program, or a scribbled note, the expert’s reliance on the work, in and of itself, turns that work into an irreplaceable piece of evidence in the case. The thing relied upon must be examined, as a piece of evidence. The parties do not have the option to pay someone to create substitute evidence. Reproducing and using such evidentiary materials falls squarely within protections afforded by the fair use doctrine. And copying the materials does not constitute copyright infringement. On the other hand, fair use does not provide an excuse for lawyers or litigants to steal the copyright-protected work product they may commission to assist them with their litigation efforts.

If you hire a photographer to take pictures for your case, you have to pay the photographer for her photos. But when you ask an opposing expert for a copy of the articles and book chapters relied upon, you are entitled to copies, and making them does not amount to copyright infringement. That is the case even if they are “copyrighted” works, and even if you need to copy them in their entirety.

Copyright 2016, A. Scott Ross, all rights reserved.

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