Synopsis: This article analyzes the fair use doctrine in U.S. Copyright Law, as well as relevant case law, focusing in the recent famous Google Books’ case where the court found this searchable database as transformative and consequently fair use.
First, I will define what is first use in U.S. copyright law and why does it matter. Fair use is an exception to exclusive rights of copyright, one that exists to avoid the rigid application of copyright in a way that might stifle the creativity that the law is designed to foster. Therefore, if a use of copyrighted material is fair, then there is no infringement.
In this regard, the U.S. Congress codified the fair use exception in 1976, providing as examples of non-infringing fair uses: “criticism, comment, news reporting, teaching, scholarship or research.” 35 U.S.C. § 107.
Now, like most of the U.S. legal doctrines, a Court must weight several factors in determining whether there is an effective fair use defense against a copyright infringement claim. The four non-exclusive factors that guide the fair use determination are 1) the purpose and character of the use – e.g., commercial nature or 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; and, 4) the effect of the use upon the potential market for or value of the copyrighted work.
One of the cases that explored the contours of fair use was decided by the U.S. Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). In Campbell, a rap parody of Roy Orbison’s “Pretty Woman” by Two Live Crew was held to constitute a transformative, new work.
As relates to factor 1 of the fair use test (purpose and character), the Court said: “The central purpose … is to see … whether the new work merely supersede[s] the object of the original creation, or instead adds something new with further purpose or different character, altering the first with new expression, meaning, or message.” This inquiry “asks … whether and to what extent the new works is transformative.”
But, what is “transformative use”? Judge Pierre Leval coined the term “transformative use” in a 1990 law review article when he used it to describe what used to be called “productive uses.” Four years later, the U.S. Supreme Court applied the “transformative use” principle in Campbell.
The U.S. Courts subsequently came to focus on “transformative purpose”, which refers to a finding of fair use where defendant copies an entire work, without creating a new work, if the court perceives a sufficient public benefit in the appropriation. For instance, in Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 606 (2d. Cir. 2006), Defendant’s coffee-table book featuring reduced-sized images of posters from Grateful Dead concerts was held to be transformative because the images in the books were treated as historical artifacts to documents facts, rather than for the poster’s original aesthetic purpose.
One of the iconic fair use cases in recent times involves the Google books’ project. In The Author’s Guild, et al. v. Google Inc., Plaintiff sued in 2005, a year after Google launched its Library Project.
A class of authors was eventually certified and Google reached a settlement with them. The deal was scuttled by the Second Circuit in July 2013. Back in the District Court, the trial judge held in November 2013, on summary judgement, that Google’s program was fair use and not copyright infringement. The Guild appealed a few months later.
The Second Circuit Court of Appeals, in an October 16, 2015 decision authored by Circuit Judge Leval, concluded that: i. Google’s copying is transformative within the meaning of Campbell; ii. Google does not offer the public meaningful substitute for matter protected by the plaintiffs’ copyrights; and iii. Google satisfies the statutory test for fair use.
The Author’s Guild petitioned for certiorari to overturn the Second Circuit ruling on December 31, 2015. The arguments of Authors’ Guild and critics of “transformativeness” were the impermissible expansion of definition of “transformativeness”, arguing that the transformative approach focuses more on the use than on the work itself. Even entire copying, if arguably in the public good, can escape copyright infringement. The Author Guild also argued that transformative has become the blob that swallowed up the fair use doctrine, to the exclusion of other fair use factors enumerated in Section 107, as well as split in the Circuits.
One of the takeaways of The Author’s Guild, is the reasoning of the Second Circuit where it held that “[w]hile authors are undoubtedly important intended beneficiaries of copyright, the ultimate, primary intended beneficiary is the public.” Therefore, it is important to analyze the alleged infringing uses of copyrighted works considering copyright law’s core constitutional purpose –which is to enhance public knowledge. Moreover, fair use acts as a counterbalance to copyright term extension, providing exceptions for using copyrighted materials in ways that benefit society without destroying in the market for books. Also, the landscape has shifted to a more hospitable one for digital copying and for secondary uses of art.
The court also held that there is no reasoning for presuming that a commercial use is not a fair use (where there is so significant substitutive competition.) Consequently, news reporting and commentary, quotation in historical books, reviews of books, performances, parody –are all done commercially for profit.
Another takeaway is the mere fact that the original work is a factual work should not imply that others may freely copy it. The converse is true as well: not all fictional works are immune from a fair use defense.
There is no categorical rule that a copying of the entirety cannot be a fair use. If the use is transformative and does not harm the value of the copyrighted work, then copying of the entirety –as in the case of Google Books –can be a fair use. Even a use “for a valuably transformative purpose” may not be fair use if it might nonetheless harm the value of the copyrighted original by providing a competing market substitute.
Finally, the implications for derivative works against transformative use would be that derivative works are also transformative works. 
Arturo Ishbak Gonzalez
Prolongación Paseo de la Reforma #1000, Ciudad de México.
Twitter: @ArturoIshbak
