Photocopying and copyright
Concerns of Project Managers
Sheila A. Millar and Robert H.G. Lockwood, Keller and Heckman, Washington, DC
In recent years, copyright holders have pursued legal action against those who photocopy protected works without permission from the publisher. While past actions have focused on photocopying by for-profit organizations, a federal district court has now found that a not-for-profit trade association's unauthorized photocopying of a newsletter constitutes copyright infringement. In addition, the not-for-profit association has agreed to pay damages totaling $245,000 to the newsletter's publisher for the infringing photocopying. Television Digest Inc. v. United States Telephone Association, 841 F.Supp. 5 (D.D.C. 1993). (See American Geophysical Union v. Texaco Inc., 802 F.Supp. 1 (S.D.N.Y. 1992), holding that the copying of a journal article by a for-profit corporation for research purposes was infringement.) The USTA case is therefore a case of first impression with possible widespread ramifications for associations who engage in photocopying. The facts of the case are instructive.
The United States Telephone Association (USTA) held one subscription to the newsletter Communications Daily since 1981. USTA admitted to making between 12 and 56 copies of each issue of the entire newsletter and distributing these copies to association staff members. USTA contended that the copying, although unauthorized, did not infringe the publisher's copyright because it was protected under the fair use doctrine. In brief, the fair use doctrine limits the copyright holder's rights by permitting reproduction for purposes such as criticism, comment, research, or educational purposes. USTA contended that its copying was for educational and research purposes.
In this edition of PMNETwork, Owen J. Shean, Esq., succeeds Jon M. Wickwire, Esq., as editor of the Legal Lights column. Mr. Shean is a shareholder in the national law firm of Wickwire Gavin, PC. He received his juris doctorate and bachelor of arts, magna cum laude, from the University of Virginia. Mr. Shean is co-author of Construction Insurance: Coverages and Disputes, to be published by The Michie Company in the fall of 1994. Both Mr. Shean and PMNETwork welcome submission of articles for this column (seepage 4 for PMI Communications address).
The proliferation and dissemination of written information creates significant questions under the federal copyright laws. The federal copyright statute, 17 U.S. C. Sec. 101, encourages creative and artistic works by providing authors exclusive rights in copyrighted works. The statute, however, recognizes that research, scholarship, and criticism require some reproduction of copyrighted works. Thus, the federal act provides for the “fair use” of copyrighted material. Under the fair use doctrine, reasonable use may be made of copyrighted material for “criticism, comment, news, reporting, teaching, scholarship, or research” without the prior consent of the author. The following article analyzes the fair use doctrine in the context of copyright of newsletters by a not-fior-profit organization. The article arises from a recent request to PMI's legal counsel regarding copyright provisions. The articles is of particular significance to those organizations engaged in research, reporting, and teaching.
Owen J. Shean, Feature Editor
The factors to consider in assessing whether a particular use is “fair” in-elude: (1) the purpose of the use, in-eluding whether such use is of a commercial nature or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the amount of the portion copied in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or the value of the copyrighted work.
After applying the above factors to the facts in this case, the court found that the copying was not covered by the fair use doctrine and therefore constituted copyright infringement. In particular, the court found that despite USTA's non-profit status and its assertion that the copying was done to further educational and research purposes, USTA profited from the copying in the sense that it saved the cost of additional subscriptions to the newsletter. In addition, the court found that since the entire work was copied and disseminated to up to 56 association staff members, USTA's copying supplanted part of the normal market for Communications Daily.
Since the defendant, USTA, agreed to pay damages and settle the case rather than appealing the decision, the opinion will stand. Thus, this leaves intact the court's determination that cover-to-cover copying, even by a not-forprofit association, was of a commercial nature, since it enabled USTA to save the cost of additional subscriptions. As a result of the decision, any association that engages in cover-to-cover photocopying without the consent of the copyright holder will likely be found to be a copyright infringer, at least in the D.C. Circuit.
The decision could well prompt further legal action by publishers targeting trade and other associations. Even more limited photocopying could become the basis for future copyright infringement claims against not-for-profit associations, much as photocopying of individual copyrighted articles by a for-profit corporation has been found to be an infringement in the Second Circuit. American Geophysical Union v. Texaco Inc., 802 F.Supp. 1 (S.D.N.Y. 1992) (appeal pending). For this reason, many firms (including associations) are developing guidelines on photocopying.
It is important to note that the publisher of Communications Daily, Warren Publishing, brought suit only after a former employee, responding to a reward offer, reported USTA's photocopying practices to the publisher. The USTA case is one of a growing number of photocopying infringement cases brought on the basis of information provided by an informant in response to offers to reward whistleblowers for information regarding illegal photocopying. These “bounty hunter” provisions have led disgruntled employees and others to turn in infringing parties and have assisted certain publishers in targeting possible defendants.
The willingness of many publishers to aggressively pursue infringing parties, coupled with the USTA case, underscores the importance of understanding and complying with the copyright laws. At a minimum, associations should evaluate photocopying practices and consult with legal experts to ensure that they understand their obligations, as well as their rights, under the copyright laws.
Sheila A. Millar is a partner with the law firm of Keller and Heckman. Ms. Millar's practice includes counseling clients on intellectual property matters, including trademarks, copyrights, trade secrets, and unfair competition. She is also an expert on advertising matters. She assists clients in developing programs to protect proprietary rights, and is a frequent lecturer on intellectual property and advertising topics. Ms. Millar received her B.A., cum laude, from Bryn Mawr College in 1975, and her J.D. from the American University in 1980.
Robert H.G. Lockwood is associated with the law firm of Keller and Heckman. Mr. Lockwood's practice includes intellectual property, with a particular emphasis on trademark and copyright matters. He received his B.A. from the College of William and Mary in 1988, and his J.D. from the Widener University of Delaware law School in 1991.
EXCERPTS FROM THE COPYRIGHT LAW
The copyright law as enacted in The Copyright Act of October 19, 1976, is complex and possibly confusing. To ensure a clear understanding of its relationship to the use of cases as represented in this Instructor's Manual, the relevant portions of that law are presented below (Source: Circular 21, Reproduction of Copyrighted Works by Educators and Librarians, Copyright Office, Library of Congress, Washington, D.C. 20559 - U.S. Government Printing Office: 1991 282-171/20.050):
106. Exclusive rights in copyrighted works
Subject to sections 107 through 118, the owner of copyright under this title has the exclusive right to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work; …
107. Limitations on exclusive rights: Fair use
Notwithstanding the provisions of section 106, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:
- (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.
Agreement On Guidelines For Classroom Copying With Respect To Books And Periodicals In Not-for-profit Educational Institutions
1. Single Copying for Teachers
A single copy maybe made of any of the following by or for a teacher at his or her individual request for his or her scholarly research or use in teaching or preparation to teach a class:
- A. A chapter from a book;
- B. An article from a periodical or newspaper;
- C. A short story, short essay or short poem, whether or not from a collective work;
- D. A chart, graph, diagram, drawing, cartoon or picture from a book, periodical, or newspaper;
II. Multiple Copies for Classroom Use
Multiple copies (not to exceed in any event more than one copy per pupil in a course) maybe made by or for the teacher giving the course for classroom use or discussion; provided that:
- A. The copying meets the tests of brevity and spontaneity as defined below; and,
- B. Meets the cumulative effect test as defined below; and,
- C. Each copy includes a notice of copyright
(ii.) Prose: (a) Either a complete article, story or essay of less than 2,500 words, or (b) an excerpt from any prose work of not more than 1,000 words or 10% of the work, whichever is less, but in any event a minimum of 500 words.
[Each of the numerical limits stated in “i” and “ii” above maybe expanded to permit the completion of an unfinished line of a poem or of an unfinished prose paragraph.]
(i.) The copying is at the instance and inspiration of the individual teacher, and
(ii.) The inspiration and decision to use the work and the moment of its use for maximum teaching effectiveness are so close in time that it would be unreasonable to expect a timely reply to a request for permission
(i) The copying of the material is for only one course in the school in which the copies are made.
(ii) Not more than one short poem, article, story, essay or two excerpts may be copied from the same author, nor more than three from the same collective work or periodical volume during one class term.
(iii) There shall not be more than nine instances of such multiple copying for one course during one class term.
[The limitations stated in “ii” and “iii” above shall not apply to current news periodicals and newspapers and current news sections of other periodicals.]
III. Prohibitions as to I and II Above
Notwithstanding any of the above, the following shall be prohibited:
- A. Copying shall not be used to create or to replace or substitute for anthologies, compilations or collective works. Such replace-mentor substitution may occur whether copies of various works or excerpts therefrom are accumulated or reproduced and used separately.
- B. There shall be no copying of or from works intended to be “consumable” in the course of study or of teaching. These include workbooks, exercises, standardized tests and test booklets and answer sheets and like consumable material.
- C. Copying shall not:
- (a) substitute for the purchase of books, publishers' reprints or periodicals; [Emphasis added]
- (b) be directed by higher authority;
- (c) be repeated with respect to the same item by the same teacher from term to term.
- D. No charge shall be made to the student beyond the actual cost of the photocopying….
PMNETwork • August 1994