First Witch:     When shall we three meet again/In thunder, lightning, or in rain?

Second Witch:  When the hurlyburly’s done,/When the battle’s lost and won.

Third Witch:    That will be ere the set of sun.


ALL:                 Fair is foul, and foul is fair:/Hover through the fog and filthy air.

[MacBeth, Act 1, Scene 2]

What constitutes, or should constitute, “fair use” is an ongoing issue in copyright.  Indeed, it has been the focus of postings by this author about books and movies.  As the most recent of those postings noted in conclusion, we continue to struggle with “balanc[ing] the interests” of the newcomers wishing to transform the old into a newer art against “those of the original authors and artists to comfortably control their works.  The debate and contests continue.”  And so we ended there with a promise for a next blog to continue the process of examining the fair use issue—and we are happy to report that the Second Circuit’s February 27, 2018 decision in Fox News Network, LLC v. TVEyes, Inc. goes a long way in helping us differentiate fair from foul in this area and in lifting some of the fog seemingly inherent in fair use tests that eschew bright-line rules.  Thus, it is a useful ruling for lawyers in the United States to review, as well as in the EU where the issue of fair use is at much earlier evolutionary point.

To begin, let us first turn to what TV Eyes was all about:

Defendant TVEyes, Inc. (“TVEyes”) is a media company that continuously records the audiovisual content of more than 1,400 television and radio channels, imports that content into a database, and enables its clients, for $500 per month, to view, archive, download, and email to others ten-minute clips. TVEyes also copies the closed-captioned text of the content it imports, allowing its clients to search for the clips that they want by keyword, as well as by date and time.

Plaintiff Fox News Network, LLC (“Fox”) sued TVEyes for copyright infringement in the United States District Court for the Southern District of New York. The principal question on appeal is whether TVEyes’s enabling of its clients to watch Fox’s programming is protected by the fair use doctrine.

TVEyes’s re-distribution of Fox’s content serves a transformative purpose insofar as it enables TVEyes’s clients to isolate from the vast corpus of Fox’s content the material that is responsive to their interests, and to access that material in a convenient manner. But because that re-distribution makes available to TVEyes’s clients virtually all of Fox’s copyrighted content that the clients wish to see and hear, and because it deprives Fox of revenue that properly belongs to the copyright holder, TVEyes has failed to show that the product it offers to its clients can be justified as a fair use.

[TVEyes, Inc.]

While the majority opinion vindicated Fox News’ ultimate interest under the traditional Campbell v. Acuff-Rose Music, Inc. fair use criteria discussed in previous postings, it would seem that Judge Kaplan in his concurrence (and Fox News in its briefs) better understood and more often more accurately expressed what was occurring here, as is explained below.

The majority begins, appropriately, with an analysis of the first Campbell factor—namely the purpose and character of the use:

In considering the first statutory factor—the “purpose and character” of the secondary use, 17 U.S.C. § 107(1)—the primary inquiry is whether the use “communicates something new and different from the original or [otherwise] expands its utility,” that is, whether the use is “transformative.” Google Books, 804 F.3d at 214. To be transformative, a use must “do[] something more than repackage or republish the original copyrighted work”; it must “`add[] something new, with a further purpose or different character, altering the first with new expression, meaning or message . . . .'” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014) (quoting Campbell, 510 U.S. at 579). “Although . . . transformative use is not absolutely necessary for a finding of fair use, . . . [transformative] works . . . lie at the heart of the fair use doctrine,” Campbell, 510 U.S. at 579, and “a use of copyrighted material that `merely repackages or republishes the original’ is unlikely to be deemed a fair use,” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (quoting Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990)).

[TVEyes, Inc]

The majority in applying these concepts actually blurred the top level “purpose and character” concept with the sub-component “transformative use” question to confusingly conclude that “TVEyes’s re-distribution of Fox’s content serves a transformative purpose” but not a fair use.  Perhaps sensing the tension inherent in such conclusions, the majority actually found that “The Watch function certainly qualifies as technology that achieves the transformative purpose of enhancing efficiency” and the “TVEyes’s Watch function is at least somewhat transformative.” [TVEyes, Inc].  While past cases have assessed the “purpose and character” of a new work by determining whether it made a “transformative use” of the original work, the clearest of those cases do not blend it into an analysis of whether the new work itself had a “transformative purpose.”  That confuses the test because the test is, and must be, whether the original work was transmuted by “altering the first with new expression, meaning or message” in the words of Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014) (quoting Campbell, 510 U.S. at 579) (“transformative use”) and not merely that the new work, or its authors, intended such to be the result (“transformative purpose”).

The Fox News briefs, and the Kaplan concurrence at least in part, were more accurate and direct.  The Kaplan concurrence said quite directly, after reviewing the applicable law, that “[t]hese cases support my inclination to conclude that a technological means that delivers copies of copyrighted material to a secondary user more quickly, efficiently or conveniently does not render the distribution of those copies transformative, at least standing alone.”  In other words, the use was not transformative, whatever the purpose might be.  As Judge Kaplan correctly observed, a use may be fair, though a use is not transformative nor intended to be:

My hesitation in this regard is strengthened by this Court’s subsequent treatment of Sony. No prior opinion of this Court says, or even suggests, that Sony stands for the proposition that time-shifting in particular, or efficiency-enhancing delivery technology in general, is transformative. In Swatch Group Management Services Ltd v. Bloomberg L.P., we described Sony as a decision “finding a non-transformative use to be a fair use.”[50] Infinity Broadcast Corp. described Sony’s discussion of time-shifting as a “determin[ation] that time-shifting of television programs by consumers in their homes was a non-commercial use.”[51] Indeed, as noted, we there held that an efficiency promoting technology was not transformative and gave no sign that Sony was relevant to that conclusion.

[TVEyes, Inc].

Indeed, despite the clarity shown here, even Judge Kaplan slips into use of the blurred phrase “transformative purpose” on occasion in his concurrence.  Both courts and counsel in the future should avoid such conflations—while the purpose and character test is ultimately about the purpose and character of the new work, the transformative use component of that prong is fundamentally an analysis of how the old work has been deployed as part of the new work.

To see that, one can pick up on the metaphor Judge Kaplan uses:

The Search function “allows clients to identify videos that contain keywords of interest”[14] — it “enables users to isolate, from[15] an ocean of programming, material that is responsive to their interests.” The Watch function, in contrast, “allows TVEyes clients to view up to ten-minute, unaltered video clips of copyrighted content.”[16] In short, the Search function, which is not challenged here, is simply a vehicle that locates Fox’s copyrighted works among other works of interest — it finds the desired species of fish in the majority’s metaphorical sea. But the Watch function then catches those fish and delivers them to the fishmonger’s stall where TVEyes lays them unchanged (one might say untransformed) on cracked ice for the inspection of its patrons.

[TVEyes, Inc].

Because that analogy is fairly accurate as to what TVEyes did, but would not cover what occurs with GoogleBooks, the common sense of Judge Kaplan’s conclusions come through.  Given the snippets and limitations that TVEyes decision found differentiated its circumstances from those in GoogleBooks, and to extend the metaphor, Google’s use of the fish is transformative because of the way that the original works (books) are cut up and presented for consumption by the reader of the new work (the search result).  If the defendant in  TVEyes finds liability as the fishmonger, the one in GoogleBooks escapes it as an itamae or wakiita of sushi, behind or near the cutting board in front of which the fish are not merely placed on ice but are filleted, sliced, cut, rolled and presented along with ginger, scallions, sushi rice and the other accoutrements through which a raw whole is transformed into the small, flavorful pieces into which the whole fish had been transformed.

Perhaps with the sushi extension to Judge Kaplan metaphor, we now move from the observation that “fair is foul” to the question of “fish or fowl,” as we must determine whether these arguments will find places to roost inside and outside the United States.  It remains important to sharpen the discussion of what constitutes fair use as many current artists re-create, re-purpose or re-arrange to express themselves.  An ambiguous standard, as much or more so than one definitively strict or definitively forgiving, chills creativity. See Andrew Long, Mashed Up Videos and Broken Down Copyright: Changing Copyright to Promote the First Amendment Values of Transformative Video, Andrew S. Long, Mashed Up Videos and Broken Down Copyright: Changing Copyright to Promote the First Amendment Values of Transformative Video, 60 Okla. L. Rev. 317, 353 and 369-70 (2007); see also Peter S. Menell, Adapting Copyright for the Mashup Generation (2014 draft) (“It is impossible to know how much the lack of a balanced, authorized entry ramp into the mashup genre chills creativity and robust careers.”)  The need for such a clear standard under US law is all the more important where the evolving EU law continues to struggle with when and how to even adopt the fair use concept generally, never mind dealing with its nuanced application in any given case.  This need for clear standards is well illustrated in the dissent by Judge Jacqueline H. Nguyen of the United States Court of Appeals for the Ninth Circuit in Williams v. Gaye, the so-called “Blurred Lines” case, where she felt the majority had “establishe[d] a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere” with an overly restrictive reading of applicable law concerning how much of previous work or artist’s style may be copied without running afoul of copyright.

Rita Matulionyte discussed just such challenge in 10 years for Google Books and Europeana: copyright law lessons that the EU could learn from the USA, International Journal of Law and Information Technology, 2016, 24, 44–71, doi: 10.1093/ijlit/eav018.  As she noted, a “goal of [her] article”  is to determine “whether there are lessons that the EU could learn” from “important features of the US copyright system that deserve special attention from the European lawyers” such as “the transformative use doctrine” and whether “ these elements of the US copyright system could be of use when amending the EU copyright system.” Id. at 46.  Indeed, she notes express that the “first idea that comes to mind when reading US court decisions [like GoogleBooks] on digital libraries is that Europe needs more flexible exceptions” within its copyright rules, exceptions “such as fair use.” Id. at 50-51.  Key to this is the transformative use doctrine, which “has helped the US copyright system make way for innovative and value-added uses of existing copyright works.” Id. at 51-52.

While US law has allowed such transformative uses of existing works for some, European law has been slower to embrace the rationale that both copyright protection and its exceptions can promote creativity:

An interesting aspect of the transformative use doctrine is that it enables creativity and innovation through the application of copyright exceptions. In the EU, legislators often seem to assume that creativity and innovation are encouraged by granting increasingly broad and exclusive rights to creators and industries. In contrast, exceptions are merely intended to permit certain free consumption of creative works. The transformative use doctrine demonstrates that certain reuses of existing copyrighted material may be equally creative and innovative, and thus have the potential to lead to significant public benefits. In order to encourage such innovative and value-added reuse, it could be permitted in certain cases without prior permission from the right holders.

[Id. at 54]

This notion of fair use is so engrained in US law that fair use fundamentals are extolled every year in Fair Use Week, “an annual celebration of the important doctrines of fair use in the United States and fair dealing in Canada and other jurisdictions,” whose celebrants preach that “Fair use and fair dealing are essential limitations and exceptions to copyright, allowing the use of copyrighted materials without permission from the copyright holder under certain circumstances. Fair use and fair dealing are flexible doctrines, allowing copyright to adapt to new technologies. These doctrines facilitate balance in copyright law, promoting further progress and accommodating freedom of speech and expression.”  Though not on most European calendars because fair use (and its transformative use substrata) is not applied generally in those countries, many of those jurisdictions do allow for specific copyright exceptions like parody or pastiche, which are examples of transformative uses. Id. at 55.  In fact, some of those have been addressed in this space before.

And our courts have accepted the notion that copyright is best applied when it  “encourages others to build freely upon the ideas and information conveyed by a work.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349–50 (1991).  As another jurist recently noted:

accommodations are necessary because “in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) (quoting Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845) (Story, J.)). Every work of art “borrows, and must necessarily borrow, and use much which was well known and used before.” Id. (quoting Emerson, 8 F. Cas. at 619); see 1 Melville D. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[B] (rev. ed. 2017) (“In the field of popular songs, many, if not most, compositions bear some similarity to prior songs.”).  But for the freedom to borrow others’ ideas and express them in new ways, artists would simply cease producing new works—to society’s great detriment.

[Williams v. Gaye, Nguyen, J., dissenting]

The majority opinion issued March 21, 2018 in this “Blurred Lines” case seems far too protective of the earlier artist at the expense of the latter, a result criticized here when it occurred at the district court level.  Though some might contend that the “Blurred Lines” case is not a fair use (because the 9th Circuit does not employ that term), there is a common sense resonance to the dissent’s notion that the central question in the case is “whether they [i.e. Williams and Thicke] took too much,” which is a central element of any fair use analysis.

TVEyes may be a better US example for the EU to follow than the “Blurred Lines” decisions if an EU embrace of fair use is to have some liberating effect on its tendency to default toward overprotection of earlier artists. Writing after GoogleBooks but before TVEyes, Matulionyte noted that US  law seemed to restrict the definition of market harm to a “narrow” one “concerned with only one type of economic injury to a copyright holder—the harm that results from the secondary use serving as a substitute for the original work.” Matulionyte, supra, at 59.  But TVEyes, and even Dr. Seuss Enterprises LP v. Comicmix LLC, et al., a Seuss case discussed previously as well, have noted that licensing for alternative, other uses and purposes is now a protectable economic interest limiting the fair use exception: as Comicmix, 256 F. Supp. 3d at 1108, noted, “[t]his factor considers ‘not only the extent of 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, 114 S.Ct. 1164 .” This “factor also considers any impact on `traditional, reasonable, or likely to be developed markets.’ Id. (quoting Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 81 (2d Cir. 1997)).”  Thus, in Comicmix, the Court noted that “[i]t is not uncommon for DSE to license” its works, including in “collaborations with other rights holders” and there was no basis to conclude that such collaborations would not apply to “works of Boldly‘s type, … and therefore a potential harm to Plaintiff’s licensing opportunities is presumed.” Applying such a constraint may well appeal to the more conservative European approach to copyright.

TVEyes thus holds out the possibility that fair use may now preserve a sense of fair play, both under US law and abroad, that balances better the respective rights of original creators and later re-creators and transforming users. Strongly curtailing the pirating of Fox News content and retreating from what some copyright holders feared were inherent excesses of GoogleBooks, TVEyes is a good beginning, though fair play may continue to have many meanings.  While its “transformative purpose” references still leave applicable standards a bit opaque, TvEyes’ thrust steers the relevant analysis into fairer straits that pass between the extremes that had previously separated artists in the stark copyright protection regime in much of the EU (and possible still in the 9th Circuit).  Perhaps steering such middle course can avoid the perils of the extremes:

Launcelot Gobbo: Truly then I fear you are damn’d both by father and mother; thus when I shun Scylla, your father, I fall into Charybdis, your mother. Well, you are gone both ways.

[Merchant of Venice, Act III, Scene 5]

TVEyes tempered approach appears likely more acceptable and welcoming, should the EU looks in its direction for examples as copyright reform is addressed in 2018.