A copyright does not confer an absolute or unlimited right to prevent copying of the protected work. Rather, there are instances in which infringement of a copyright is protected under what is called the "Fair Use Doctrine." A recent case - Kelly v. Arriba Soft Corporation, ___ F.3d ___, 2002 WL 181351 (9th Cir., Feb. 6, 2002) - has, for the first time, evaluated the Fair Use Doctrine in the context of Internet search engines, thumbnails, and linking, beginning the process of defining the threshold of fair use of a copyrighted work in those contexts.
The case involved a complex analysis of one component of a fundamental principle that I've trumpeted for many years: "You can't make money using other people's stuff!"
Infringement of a copyright, particularly one that was registered at the Copyright Office in a timely manner, can be very costly to the infringer, and in some cases can result in a windfall for the owner of the copyright. Accordingly, a little refresher on the underlying topic is in order.
In the United States, copyrights are governed solely by federal laws and international treaties. Individual states are entirely precluded from becoming involved in copyright issues.
Enacted by Con-gress under its constitutional power to "promote the prog-ress of the... useful arts, by securing for limited times to authors... the exclusive right to their... writings," the Copy-right Act of 1976 put in place an entire overhaul of Ameri-can copyright law. Importantly, within the borders of the United States, the extent to which the holder of a copyright can prevent others from exploiting the copyrighted work is entirely set forth in the Copy-right Act and court decisions interpreting it. The extent of these rights varies depending upon the type of work. For example, the owner of a copyright on a photograph or motion picture can completely prevent anyone from copying the work (except in cases of fair use, as discussed below). The owner of a copyright on a sound recording, on the other hand, often has no power to prevent anyone from publicly playing it, but is entitled to collect defined royalties from anyone who does. (Those familiar with ASCAP understand how that process functions.)
The topic this month involves photographs, which are very dear to the readers of this column. The rules applicable to motion pictures are, for the most part, the same as for photographs.
Another worthwhile digression is a reminder about the process for securing a copyright, using a photograph as an example. An artist acquires a copyright when the work is first "fixed in a tangible medium." Accordingly, a photographer acquires a copyright on a photograph upon pushing the camera's trigger, because the work has become fixed in the tangible medium of the exposed but undeveloped film (or an electromagnetic medium in the case of a digital camera). Parenthetically, the photographer's copyright interest is only one of the two distinct rights involved in a photograph. The other is the right to photograph the subject matter which, in the case of a photograph of a person, involves that person's right of publicity and privacy (the reason you need a release).
After pushing the trigger on the camera, the photographer acquires a copyright on the resulting photograph and, with it, the general right to prevent copying of the photograph, as well as the public display of it, and preparation of so-called derivative works of it. This lasts for the term of the copyright, which is many decades - although just how many is currently before the U.S. Supreme Court. However, merely having the copyright brings with it little power to enforce it. That power is limited to obtaining an injunction against infringement and recovery of actual damages caused by infringement.
Conforming with the registration and deposit requirements is what puts teeth into a copyright. That means sending a copy of the work, along with a registration form and the appropriate fee, to the Copyright Office, all according to the rules of the Register of Copyrights. So long as the copyright owner accomplishes registration and deposit prior to the onset of the infringing activity, the owner has the added right to recover statutory damages and attorneys' fees. It is advisable to accomplish registration and deposit in any event within three months of the first publication of the copyrighted work; that garners the right of attorneys' fees and statutory damages regardless of when infringing activity begins.
The importance of the ability to recover attorneys' fees is obvious. Even more important, however, is the right to statutory damages. The copyright owner who has complied with the registration and deposit requirements can opt to recover hefty statutory damages and, in so doing, is relieved of the requirement of establishing sometimes difficult-to-prove actual damages.
An infringer can dramatically limit statutory damages by establishing that the infringement was innocent, which brings up the final item in the process: notice. Affixing a notice to the work (for example, "� 2002 Teddy Communications, Inc.") trumps the infringer's claim of innocence, facilitating the copyright owner's ability to recover full-blown statutory damages. Such a notice can and should be affixed regardless of the status of registration and deposit.
The moral of this digression is that you should comply with the registration and deposit requirements within three months of issuing your masterpieces. The particulars are beyond the scope of this article, but much can be learned online at http://lcweb.loc.gov/copyright/.
Turning to the topic at hand - fair use - there are instances in which Congress felt it inappropriate to allow a copyright owner to entirely prevent copying of a protected work. As an illustration, suppose an airplane crashes into a billboard. The billboard, although advertising, is a work upon which the creator holds a copyright. Can the owner of the billboard prevent the local television station from showing video coverage of the crash scene on the evening news because it infringes the copyright on the billboard? Obviously not. The reason is that the television station is engaged in fair use of the work.
In that example, there is no question that the television station is infringing the copyright. It has copied the billboard, and has done so without approval of the owner of the billboard's copyright. However, the television station's broadcast is protected by both the fair use defense and the First Amendment.
Fair use is infringement of a copyrighted work "for purposes such as criticism, comment, news reporting, teaching, scholarship or research," according to section 107 of the Copyright Act. Necessarily, there is no hard line separating what is and what is not fair use. The Copyright Act, building on decades of court decisions on fair use, commands that fair use is to be determined on a case-by-case basis, considering factors including "(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."
Clearly, Congress envisioned a wide variety of circumstances in which the public should be allowed free use of copyrighted material. Remarkably, although Congress didn't have the Internet in mind in 1976, the fair use doctrine as written fits quite well the copyright usage on the Word Wide Web, as this month's topic case - Kelly v. Arriba - demonstrates.
Leslie Kelly, a photographer, found Arriba's Website, a search engine - located at http://ditto.com/ as of this writing - that displayed search results as thumbnail pictures, rather than verbal descriptions of the results. Like other search engines, Arriba used a "crawler" that surfed the Web in search of pages associated with various words. Unlike other search engines, this one captured entire images, not just URLs. The crawler, upon finding an image, downloaded it, made a thumbnail from the downloaded copy, and then discarded the full image. So, for example, a search for "Boston" produced thousands of thumbnails somehow involving Boston, including presumably paid advertisements for Boston Magazine and for a couple of Web travel agents that book trips there. Clicking a thumbnail linked you to the source photograph. Unquestionably, Arriba was infringing an infinity of copyrights, but claimed that it all was fair use.
Specifically, infringement occurred (1) when Arriba's crawler first copied the picture; (2) when Arriba made a thumbnail (a derivative work) from it; (3) when the site displayed the thumbnail in response to the search; and (4) when the site displayed the entire picture inside Arriba's frame. The court found all this was fair use, excepting the last one. The reasoning is important.
The court found that the entire process of creating and displaying the thumbnails was fair use. In so finding, the court noted two key points. First, the sole purpose of the original copying of the entire photograph was for creating the thumbnails; the copy was discarded after the thumbnail was created. Second, the quality of the thumbnails was dramatically reduced from that of the originals. Noting that the fair use exception was designed for the benefit of the public, the court found a public benefit "by enhancing information gathering techniques on the Internet." Also important was the court's finding that the thumbnails did not harm the market for the photographer's original images for reasons including poor quality. Thus, the infringement of creating and displaying the thumbnails was subject to the fair use exception.
Displaying the whole picture (after the clicking of the thumbnail) is entirely different. The court had little difficulty finding that Arriba's display of entire photographs was not subject to the fair use exception, and therefore violated the photographer's exclusive right to display the copyrighted photographs. Particularly objectionable, the court found, was the display of the copyrighted photographs inside Arriba's frames.
The court's analysis began with the issue of when linking constitutes infringement:
"In order for Kelly to prevail, Arriba must have displayed Kelly's work without his permission and made that display available to the public. The Copyright Act defines 'display' as showing a copy of a work. This would seem to preclude Kelly from arguing that showing his original images was an infringement. However, the Act defines a copy as a material object in which a work is fixed, including the material object in which the work is first fixed. The legislative history of the Act makes clear that [s]ince 'copies' are defined as including the material object in which the work is first fixed, the right of public display applies to original works of art as well as to reproductions of them. By inline linking and framing Kelly's images, Arriba is showing Kelly's original works without his permission.
"The legislative history goes on to state that 'display' would include the projection of an image on a screen or other surface by any method, the transmission of an image by electronic or other means, and the showing of an image on a cathode ray tube, or similar viewing apparatus connected with any sort of information storage and retrieval system. This language indicates that showing Kelly's images on a computer screen would constitute a display....
"Although Arriba does not download Kelly's images to its own server but, rather, imports them directly from other Websites... [b]y allowing the public to view Kelly's copyrighted works while visiting Arriba's Website, Arriba created a public display of Kelly's works."
The important point is that the reproduction and display of copyrighted images is always infringement, and the only question is whether it is fair use. It is clear from the court's analysis of the fair use defense in connection with the thumbnails that simply linking to the front page of a Website is fair use. Besides, who would ever complain?
The court had no difficulty finding that putting the copyrighted photographs into frames was not fair use:
"Unlike the use of the images for the thumbnails, displaying Kelly's full-sized images does not enhance Arriba's search engine. The images do not act as a means to access other information on the Internet but, rather, are likely the end product themselves. Although users of the search engine could link from the full-sized image to Kelly's Website, any user who is solely searching for images would not need to do so. Because the full-sized images on Arriba's site act primarily as illustrations or artistic expression and the search engine would function the same without them, they do not have a purpose different from Kelly's use of them."
Importantly, this case draws no hard lines, nor could it. It does not hold that thumbnails are always fair use. Indeed, there are many imaginable circumstances under which the creation and display of a thumbnail clearly would not be fair use. Moreover, the case suggests that linking may always be infringement, leaving for another day the complicated analysis of the fair use defense for linking and deep linking.
Watch for this area of law to explode.
Clyde DeWitt is a partner in the Los Angeles-based national law firm of Weston, Garrou & DeWitt. He can be reached through AVN Online's offices, at his office at 12121 Wilshire Boulevard, Suite 900 Los Angeles, CA 90025, or via email at [email protected]. Readers are considered a valuable source of court decisions, legal gossip, and information from around the country, all of which is received with interest. Books, pro and con, are encouraged to be submitted for review, but they will not be returned. This column does not constitute legal advice but, rather, serves to inform readers of legal news, developments in cases, and editorial comment about legal developments and trends. Readers who believe anything reported in this column might impact them should contact their personal attorneys.
