From: CHARLI::CNICOPY 1-NOV-1994 16:24:55.33
To: COPYRIGHT
CC: CNICOPY
Subj: Texaco decision
I retrieved the Texaco decision from Westlaw around 11 am this morning and
read it (the majority opinion). I haven't read the dissent yet. As
Jonathan Franklin reported, the majority opinion did place a heavy
emphasis on the fact that Dr. Chickering made copies of the the eight
articles to add to his personal "archives." The opinion pointed out several
times that Dr. Chickering admitted that he never actually used 6 of
the articles and that he made copies for his convenience in future use.
The archiving nature of Dr. Chickering's use was far more important
than the fact that Texaco was a for profit company in the court's
determination that the first factor, the purpose and character of
the use, weighed against a finding of fair use on these facts.
Other interesting points in the opinion --
1) The court rejected Texaco's argument that the appropriate work
to concentrate on was the journal as a whole. The court clearly
considered the appropriate work to analyze in the fair use analysis
to be the individual article. Several times the court distinguished
between the copyright in the journal as a whole and the copyright in
the article. It found that the copying that was done by or for
Dr. Chickering at Texaco was an unfair use of the copyright in the
individual articles.
2) The court found that the District Court placed undue emphasis on the
fact that Texaco is a for profit corporation conducting research
primarily for commercial gain. The court said that Texaco was different
than Kinkos in that Kinko's profited directly from the copying whereas
Texaco profited only indirectly in the sense that the copying might
benefit its research and Texaco profits from its research.
3) The court made it clear that there will be instances of non transformative
uses (such as photocopying and other forms of conversion to more
useful formats) that will in some cases be fair uses. Archival copying
to build a personal research file in a for profit corporation just isn't
one of them.
4) The fact that entire works (entire journal articles) were copied does
not preclude a finding of fair use, but it does cause the third factor,
amount and substantiality of the portion used to weigh against the
copier.
5) In analysing the effect on the market, the court made the following
points:
a) it is the most important of the four elemests
b) it is important to address the effect on the market for
the particular work alleged to be infringed rather than the
effect on other works that might include it. In other words
it is the market for the articles, not the market for the journal
as a whole that matters most.
c) the nature and history of how a particular type of work
has been marketed is important in analyzing market effect -
ie, in the past there hasn't been a developed market for
or a clearly defined value for individual articles which makes
the analysis of the effect on the market for the articles
more difficult. It also makes evidence related to journal
subscriptions less helpful.
d) Some potential licensing revenues are relevant to analysis
of the market effect factor, but not every effect on potential
licensing revenues will affect the balance of the market effect
factor. "Specifically, courts have recognized limits on the
concept of `potential licensing revenues' by considering only
traditional, reasonable, or likely developed markets when
examining and assessing a secondary use's `effect upon the
potential market for or value of a copyrighted work.'"
...
"the fourth factor will favor the secondary user when the
only possible adverse effect occasioned by the secondary use
would be to a potential market or value that the copyright
holder has not typically sought to, or reasonably been able
to, obtain or capture."
...
"Thus, Texaco is correct, at least as a general matter, when it
contends that it is not always appropriate for a court to be
swayed on the fourth factor by the effects of potential
licensing revenues. Only an impact on potential licensing
revenues for traditional, reasonable, or likely developed
markets should be legal cognizable when evaluating a
secondary use's `effect upon the potential market for or value
of the copyrighted work.'"
e) When a copyright holder registers journal articles with
the CCC, he creates a workable market for individual articles,
and it is appropriate to consider license fees that would be
collected through that market in analyzing the fourth fair
use factor. It might be different if the copyright holder
did not register with a collective licensing agency.
The court ended with a statement that "Our ruling is confined to the archival
photocopying revealed by the record."
The final footnote is also interesting.
The order of the District Court is affirmed.[FN19]
FN19. Though neither the limited trial nor this appeal requires
consideration of the publishers' remedy if infringement is
ultimately found, we note that the context of this dispute
appears to make illadvised an injunction, which, in any event
has not been sought. If the dispute is not now settled, this
appears to be an appropriate case for exploration of the
possibility of a court-imposed compulsory license. See Campbell
114 S.Ct. at 1171 n. 10; 3 Nimmer on Copyright sec. 13.05[E][4][e],
at 13-241 to 13-242.
********************************************************************
Mary Brandt Jensen 414 East Clark St.
Director of the Law Library Vermillion, SD 57069-2390
Professor of Law (605) 677 6363
University of South Dakota (605) 677 6357 fax
CNICOPY@CHARLIE.USD.EDU
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