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"Fair use...is not a jacket to be worn over an otherwise infringing outfit" explained Judge Rakoff in the latest decision that seems to indicate that courts are tempering the fair use defense to copyright infringement.

On September 8, 2017, Judge Rakoff issued his written opinion in Penguin Random House LLC et al. v. Frederick Colting et al., 1:17-cv-00386 (S.D.N.Y. Sep. 7, 2017), finding that defendant's condensed and edited children's versions of various classic novels, known as "KinderGuides," did not fall under the fair use defense to copyright infringement.

Defendant argued that the guides were transformative and akin to "CliffNotes" for children, including "condensed [and] simplified" versions of the underlying works as well as original content in the form of "Main Characters," "Key Words," "Quiz Questions," and "Analysis" pages. Opinion at 2. Judge Rakoff, however, disagreed with this characterization, noting that the guides used the vast majority of each underlying work, including its "themes, characters, plots, sequencing, pace, and settings," without providing any significant analysis or additional context. Id. at 16.

The court found that defendant's addition of brief "Analysis" and "Quiz Questions" sections to the work did not cure the infringement, stating that the guides "do not recount plaintiffs' novels in the service of literary analysis, they provide literary analysis in the service of trying to make the guides qualify for the fair use exception[.]" Id. at 24.

Analyzing the four fair use factors (17 U.S.C. § 107), the court found they all weighed against fair use. Under the first fair use factor, in addition to finding the works non-transformative, the court also focused on their commercial nature. Under the second fair use factor, the court found the original works creative. Under the third factor, the court emphasized that the vast majority of the works were used, at least qualitatively. Finally, under the fourth factor, the court found that the defendant's works were likely to detract from the plaintiffs' market to sell their books or to license their rights.

Prior Trend: Broader Interpretation

Given the non-dispositive and subjective nature of each fair use factor, the application of this doctrine can vary meaningfully over time and between courts. From 2013 to 2015, it seemed the pendulum had swung decidedly toward increased findings of fair use in a number of varying situations. Two key examples led many to comment that fair use was becoming so broad as to usurp copyright.

For example, in The Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015), the Second Circuit held that Google's publication of scanned segments of copyrighted works in its Google Books search results was a fair use of underlying copyrighted materials because, even though no commentary or changes in general were added to the copyrighted text itself, the purpose of the use was highly transformative in that Google used the materials to provide information about the book, not the book itself, to the searcher. The court also found that the segments of text shown were limited and that it was unlikely that Google's use would interfere with the market for the protected works.

As another example, in Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013) the Second Circuit held that artist Richard Prince's artwork, consisting of arguably minimally edited versions of Patrick Cariou's photographs, constituted fair use. The court found that the majority of Prince's artwork, which involved copying Cariou's original photographs and editing each one by changing its size, clarity, color, or by adding content, including shapes or other photos, was sufficiently transformative because the edited images had taken on a new aesthetic and meaning regardless of the fact that they did not necessarily "comment" on the original works. The court balanced this holding with its findings that Prince's artwork had not usurped market power from Cariou, and that Cariou would likely never develop or license secondary uses of his photographs.

Present Trend: Increasingly Narrow Interpretation

In contrast with the above, over the past year or so courts – including in the Second Circuit – have begun to move away from this broad application of the fair use doctrine, adhering instead to a stricter view of what is transformative, placing more emphasis on the commercial nature of the infringing work, narrowing how much of a work can be "fairly used," and focusing on what uses will leave the original work's primary and secondary markets intact. The KinderGuides case, from the Southern District of New York, is the most recent example of this growing trend.

In another example, in TCA Tel. Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016), the Second Circuit held that McCollum's use of Abbott and Costello's two-minute routine, "Who's on First?" in the play "Hand to God" did not qualify as fair use. The court held that the play's use was not transformative because it did not modify the work or use the work to express critique or analysis, even though defendant argued it was used, not for its comedic purpose, but for a very different purpose as a "theatrical device that sets up the plot, but is of little or no significance in itself." The court further held that the play used the "heart" of the work and that its use in the play could negatively impact the original work's licensing market.

This emphasis on modification or addition to the relevant source material is also found in Disney Enters. v. VidAngel Inc., No. 16-4109, 2016 U.S. Dist. LEXIS 183152 (C.D. Cal. Dec. 12, 2016), where the court found that offering $1 videos that could have filters applied to remove objectionable content was not a fair use of the underlying works. Though the court found, as in Google, that content was only being removed from, not added to, the underlying work, it rejected defendant's claim that filtering out offensive content was transformative. The court also found that VidAngel's use was clearly commercial, that it used the vast majority of the works, and that likelihood of market harm "may be presumed" because the use was for commercial gain.

Implications

The doctrine of fair use is by its nature subjective and case-specific, but copyright practitioners and businesses look for trends to aid in their analysis of the defense in clearance, due diligence, and litigation. As such, we should be mindful of this string of recent decisions that indicates a trend towards a narrower fair use defense. Accordingly, companies should take a close look at their existing product development approach and rights clearance protocol in light of their business risk tolerance.